Ball Corporation v American National Can Company

[1995] APO 4

fficial notice

decision of a DEPUTY commissioner of patents

Application        :    No. 644856  in the name of Ball Corporation

Title:    Beverage Container with Improved Drop Resistance

Action:    Opposition thereto by American National Can Company, including a request to amend the Statement of Grounds and Particulars, and a request to serve Further Evidence.

Decision:    Issued            .

Abstract:    Amendment to the statement of grounds and particulars made;

Leave to serve further evidence refused;

Opposition unsuccessful. Opponent failed to establish that critical drawings bearing a confidentiality notice, were publicly available before the priority date.

patents act 1990

decision of a dePUTY commissioner of patents

Re:Patent Application No. 644856 by Ball Corporation, and opposition thereto by American National Can Company

background

Patent application 644856 was filed on 2 April 1991 as application no. 73948/91, claiming convention priority from US application 505618. It was advertised accepted on 23 December 1993, and the American National Can Company (ANC) filed its notice of opposition on 23 March 1994, and served its statement of grounds and particulars on 23 June 1994.

On 23 September 1994, the opponent served its evidence in support of the opposition and at the same time requested an amendment to the statement of grounds and particulars. On 13 October the applicant notified the Commissioner that they objected to the amendment to the statement of grounds and particulars, and requested to be heard. On 22 November the applicant notified the Commissioner that they did not intend to rely on evidence in answer, and requested a hearing of the substantive opposition at the same time as the hearing of the request to amend the statement of grounds and particulars. The opponent agreed to this request.

The hearing was held on 21 December 1994. The applicant was represented by Mr M Royal (patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne) assisted by Mr D Hughes. The opponent was represented by Mr B Hess of counsel, instructed by Mr G Knock (patent attorney of Carter Smith & Beadle).

At the commencement of the hearing the opponent filed a request to serve further evidence, to which the applicant objected. The hearing proceeded on the basis of the evidence previously served (that is, not having regard to the further evidence), and with the understanding that the applicant would have an opportunity to respond to the further evidence (if admitted) or make further submissions consequential to allowance of the amendment to the statement of grounds and particulars (if the amendment is allowed.)

The Specification

The invention relates to a specific shape of the bottom of a beverage can, to increase its resistance to damage upon being dropped. For the purpose of this decision it is not necessary to explain in detail the nature of the invention. Suffice it to say that it concerns a can having a somewhat complex (but generally known) shape for the bottom surface; and specifies the radius of curvature of a domed portion relative to the diameter of an annular support surface (or alternately, the diameter of the can body), and the height of the top of the domed portion relative to that diameter.

Amendment of the Statement of Grounds and Particulars

When the opponent served its evidence, it also requested an amendment of its statement of ground and particulars. The amendment sought was to introduce the following particulars:

[the invention claimed in claims 1 to 14 was published and not novel in the light of]

1(c)publication in Australia before the priority date of the claims of the opposed application of drawings showing the MiraForm XII containers; and

1(d)an offer for sale of MiraForm XII containers in Australia before the priority date of the claims of the opposed application.

2A.All the features of claims 1-14 have been disclosed in drawings of the MiraForm XII containers available in Australia before the priority date of those claims, for the reasons given in point (2) above.

2B.The offer for sale of MiraForm XII containers in Australia before the priority date of claims 1-14 discloses all of the features of claims 1-14, for the reasons given in point (2) above.

I observe here that the statement as served refers to the Miraform XII container, and the principal evidence in the opposition relates to drawings of a container referred to as the MiraForm XII container. 'Point 2' in the statement of grounds and particulars provides a detailed comparison between the dimensions of the MiraForm XII container and the claims.

Mr Royal criticised the amendment to the statement on three fronts. Firstly, he asserted that the amendments radically changed the case he had to answer - the statement before amendment related to the containers themselves being publicly available, and the basis of the invention being publicly known. The amendment expanded the case to include the publication of drawings of the container, and of offers for sale.

Secondly, he criticised the amendments for being inadequate. Thus the particulars provide no indication of when or where the publication of the drawings occurred, or to whom the offer for sale made. Thus he argued the requested amendment would introduce inadequate particulars and should not be allowed.

Thirdly, he argued that if the amendments were allowed he may need to make further submissions or provide further evidence, and this would protract the proceedings.

The requirements for a statement of grounds and particulars have been set out in a number of decisions, most notably Mobay Corp v DowElanco Co 24 IPR 379, (1992) AIPC 90-895, and EI DuPont de Nemours and Company v DowElanco (1994) AIPC 91-067. I do not need to repeat them here. Suffice it to say that for the reasons indicated by Mr Royal, prima facie the proposed particulars do not of themselves give adequate notice of the case to be answered.

The situation where an amendment is requested to introduce inadequate particulars was referred to in Sumitomo Electric Industries Ltd v Bicc Plc and Corning Limited (1993) AIPC 90-988, where the delegate stated:

"The evidence does not change the case to be answered, but I believe it is prejudicial.  The proposed amendment appears to limit the evidence of the common general knowledge to Mark's Standard Handbook.  However, the wording of the particular is such that the opponents are not restricted to Mark's Standard Handbook as evidence of the common general knowledge, and could choose not to rely on Mark's Standard Handbook at all.  As a consequence, it distracts from the real case to be answered.  Not only is this prejudicial, but it is unjustifiable."

That is, an amendment to introduce inadequate particulars is generally unjustifiable; and in the absence of other factors, I would be led to refuse the present request to amend the statement.

I also note that the opponent might be subject to criticism for the timing of the request to amend the statement. As was said in Diamond Scientific Company v CSL Limited (1992) AIPC 90-927, an amendment that is prejudicial is unduly prejudicial if, inter alia, the amendment is not sought at the earliest reasonable opportunity. Where an opponent requests an amendment at the same time as serving its evidence there may well be a strong presumption that the amendment has not been sought at the earliest reasonable opportunity. But this issue was not argued before me.

In the present case the applicant was served with the evidence at the same time as the request to amend was made; the evidence is not voluminous; and the evidentiary process is complete. The amended particulars may well be criticised as above, but the circumstances are such that the applicant is plainly able to understand the case that they have to answer by simple reference to the evidence in support. In my view the totality of the material served by the opponent clearly sets out the issues, and the case the applicant has to answer could hardly be put clearer. (It may well be that there are deficiencies in the evidence upon which the opponent relies - but that is properly a matter for the applicant to identify and deal with.) Furthermore, the opponent forwent the right to evidence in answer in the knowledge of the request to amend the statement; this suggests to me that the applicant understood the case sufficient to make a judgement that evidence in answer was not required - even if the amendment was allowed. Consequently I have no doubt that the applicant knows the case it has to answer as a result of the amendment.

With respect to delays in the substantive opposition that might arise if the statement is amended, I note that the applicant asked for the request to amend the statement, and the substantive opposition, be heard together. They elected to do this after receiving the request to amend - consequently I do not think the possibility of a delay in determining the substantive opposition at that hearing gives rise to any undue prejudice.

Considering all these matters, it is my view that the applicant in the present case is not unduly prejudiced by the amendments to the statement of grounds and particulars, and I allow those amendments.

Request for Further Evidence

At the commencement of the hearing the opponent filed a request to serve further evidence. The nature of the further evidence is stated to be:

"The further evidence comprises a clarifying Declaration by K. Erik Fallquist setting out the reasons for the apparent disparity between the drawings made by the affiants in the Evidence-in-Support. "

The criteria for further evidence were discussed in Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (1993) AIPC 91-103. They are:

1. It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.

1. The evidence must be such that, if given, it would probably have an important influence on the result of the case.

1. The evidence must be such as is presumably to be believed, that is it must be apparently credible, though not necessarily incontrovertible.  

1. Would allowance of the request to serve further evidence:

a.cause unnecessary protraction of the opposition?; or

b.result in any injustice done to the other party?

In the present case, it may be argued that if greater care had been taken with the preparation of the evidence, there would not have been any need for the further evidence. But everyone makes mistakes, and in the circumstances of this case I consider the first criteria to be satisfied. I also consider that the third criteria is satisfied, as the evidence provides an explanation of the differences between parts of the evidence by a person involved with that evidence.

With respect to the second criterion, I consider that the further evidence will only have an important influence on the result if the fact of the disparity of the drawings is directly relevant to the determination of the opposition. The reasons for my decision in this opposition are set out below; the disparity in the drawings has no direct relevance to those reasons. Additionally, if the further evidence is permitted the applicant ought to be given an opportunity to respond - in which case the opposition will be unnecessarily protracted. That is, I consider that the second and fourth criteria are not met. Consequently I refuse to permit the service of the further evidence.

Substantive Opposition

The evidence in the opposition consists of two affidavits. The first affidavit, by K. Eric Fallquist, is essentially a 1½ page document accompanied by three sheets of drawings. He avers:

-he is a resident of Australia, and employed by Southcorp Packaging, Beverage Products Division (Southcorp);

-he was involved in the introduction of the Miraform XII beverage container in Australia in 1985;

-the statement of grounds and particulars accurately describes certain dimensions that were used in one version of the Miraform XII container, as such version of the container was disclosed to Southcorp in 1985;

-the drawings 'were disclosed by ANC to Southcorp and which disclose the above described Miraform XII container dimensions'; and

-during the period prior to the priority date it was clearly known to vary certain dimensions.

The second affidavit, by Andy Halasz, is a 6-page document which is largely a comparison of the claimed invention with the Miraform XII container as shown in two pages of attached  drawings. He avers:

-he is a resident of the USA;

-Southcorp Packaging, Beverage Products Division (Southcorp) is a technical licensee of American National Can Co in Australia;

-he was 'involved in disclosing the Miraform XII beverage container to Southcorp in Australia in 1985';

-the statement of grounds and particulars accurately describes relevant dimensions 'of one version of the Miraform XII container, as such version of the Miraform XII container was disclosed to Southcorp in Australia in 1985';

-the attached drawings 'were disclosed to Southcorp in Australia on or about June 24, 1985 ... These drawings were provided to Southcorp so that Southcorp could manufacture and distribute such containers in Australia, and there was no obligation on the part of Southcorp to maintain the disclosed container dimensions in confidence.'

Of the drawings attached to the two affidavits, one is unique to Fallquist, and one is clearly in common. The third drawing is apparently in common, but on closer inspection is provided as two different versions, the later version having a smaller height for the top of the domed portion.

To the extent that it is possible to ascertain from the copies of the drawings provided in evidence, the original drawings all contain the following notice:

"THIS DRAWING AND INFORMATION HEREIN CONTAINED IS THE EXCLUSIVE PROPRIETARY PROPERTY OF AMERICAN CAN COMPANY. IT IS DISCLOSED WITH THE UNDERSTANDING THAT IT WILL BE RETAINED IN CONFIDENCE. IT IS NOT TO BE DUPLICATED IN WHOLE OR IN PART AND IT WILL NOT BE USED FOR ANY OTHER PURPOSE THAN THAT FOR WHICH IT IS DISCLOSED, AND IS TO BE RETURNED TO AMERICAN CAN COMPANY UPON DEMAND."

Thus arises the fundamental issue of this opposition. The evidence provided is critically reliant upon these drawings, and prima facie the technical details in the drawings are at least very close to satisfying the criteria specified in the claims. The notice on the drawings provides an extremely strong presumption that, at least for some significant period after the date of their creation, the provision of the drawings to third parties was under an express confidentiality agreement - after all, that is what the notice states. Consequently, before I can rely upon them, I must have very clear evidence of the drawings becoming publicly available.

In support of the drawings being publicly available, it was said that Halasz had averred that they were provided to Southcorp with no obligation of confidence. Furthermore, the applicant had not provided any evidence to refute Halasz, and therefore his evidence should be taken at face value. However:

a.the drawings contain an express confidentiality statement, which is contemporaneous with the date of the drawings;

b.in contrast, Halasz provides a statement made some 9 years after the event asserting non-confidentiality. That statement is unsupported by any documentary evidence - let alone contemporary documentary evidence;

c.Fallquist, who was an employee of Southcorp at the relevant time, makes no reference to the drawings having been supplied to Southcorp free of confidentiality requirements;

d.Both Fallquist and Halasz aver that the drawings were disclosed to Southcorp Packaging, Beverage Products Division. At the hearing Mr Royal queried whether that entity existed in 1985. He asserted that he had conducted searches of Company registers, and was unable to locate the entity (although he provided no evidence to support these allegations). He also suggested that the company was formed relatively recently, and counsel for the opponent appeared to agree. Thus, although I have no evidence on the matter, there is a significant doubt in my mind whether the disclosure that is alleged to have occurred was to Southcorp, as distinct from some predecessor company - and consequent doubt as to the care exercised in the affidavits.

In considering these matters, I do not think the opponent has in any way shown that the confidentiality statement on the drawings is not an accurate statement of the basis of the disclosure of the drawings to Southcorp (or whoever) in 1985. Nor have they demonstrated that there was any subsequent publication of the drawings.

Counsel for the opponent argued that the drawings had been made publicly available by reason of them having been supplied for the purpose of Southcorp manufacturing the can. In so doing, he referred me to Humpherson v Syer (1887) 4 RPC 407, and Brystol-Meyers Co [1969] RPC 146. With regard to Humpherson v Syer he referred to the passage at the bottom of page 414 at which Fry LJ states:

"Is it the fair conclusion from the evidence that some English people, under no obligation to secrecy arising from confidence or good faith towards the patentee knew of the invention at the date when the Plaintiff took out his patent?" (my emphasis).

Counsel argued on the basis of this that if a person has been given information by a person unrelated to the applicant (as is the case here), that information is 'publicly available' even if its communication to that one person was in confidence. I disagree. I think the reference to 'towards the patentee' arises from the circumstances of that case. I consider the general proposition to be that put earlier in Humpherson v Syer (at pg 413), where Bowen LJ states:

"I put aside questions of public use, and treat this as a question of whether there has been a prior publication; that is, in other words, had this information been communicated to any member of the public who was free in law or equity to use it as he pleased. Was Widner a person to whom this communication had been made in a manner which left him free both in law and in equity to do what he liked with the information. If so, the information, of course, had been given to a member of the public, and there was nothing further to serve as consideration for any patent."

which does not identify the giver of the information. This passage has been quoted with approval in a number of decisions, such as Weir Ltd's Application (1926) 43 RPC 39, and Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87. In Brystol-Meyers, after reviewing these cases Lord Parker stated:

"... if the information, whether in documentary form or in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to amount to a making available to the public ..."

It is clear from these authorities that the relevant criterion that must be satisfied is whether the person to whom the information has been communicated is 'free to do what they like with [it]'; and if information has been communicated subject to a fetter, clearly the person in not free to do what they like with it - irrespective of whether the communicator was a relevant patentee or otherwise.

In the present case the drawings were communicated to Southcorp - but clearly subject to a fetter from ANC. That is, Southcorp were not free to do what they liked with the drawings, and consequently (in the absence of specific evidence to the contrary) they were not publicly available. Furthermore, unlike the situation in Wood and others v Westaflex (Aust) Pty Ltd 20 IPR 387, there is no evidence that the drawings were communicated to anyone outside of Southcorp (whether or not subject to any fetter).

It may be that a disclosure has been made in confidence to a large number of people; the opponent argued that such situations illustrated their case that confidential disclosures between third parties was sufficient to establish that the information was publicly available - otherwise (they asserted) a person could obtain a patent for something that was well known on a confidential basis by third parties. But in my view I do not need to resolve this issue. Whether or not a communication is truly confidential is always a matter of fact, and it may well be that communications that are nominally made in confidence are in fact not confidential. In the present case there is no evidence that the drawings were communicated to anyone other than Southcorp, and therefore no basis to find the drawings publicly available.

The applicant also argued that it was not clear from the evidence whether the publication to Southcorp took place in Australia or elsewhere. The evidence of Fallquist and Halasz is potentially ambiguous as to whether the disclosure to Southcorp occurred in Australia, or somewhere else to a representative of Southcorp. I consider the former interpretation most likely correct; however if I am wrong on this I note that there would then be no evidence before me that the information within the knowledge of Southcorp was published (as distinct from known) in Australia. In this situation, any dissemination of the information within Southcorp from an employee acquiring the information from overseas would merely be equivalent to an individual showing the drawings to himself - see Wood and others v Westaflex (Aust) Pty Ltd (supra).

I therefore do not consider the drawings to have been made publicly available in Australia before the priority date.

The amended statement of grounds and particulars also refers to publication by reason of offer for sale. To the extent that reliance is placed on the provision of the drawings to Southcorp for the purpose of manufacture, there is no evidence relating to any offer for sale to the public of either the drawings or the beverage cans.

I am thus of the view that the opponent has failed to establish that any of the material it relies on in the opposition was publicly available before the priority date of the claims.

DECISION

Having found that the opponent has failed to establish a publication date of the material upon which it relies before the priority date of the claims, I find that the opposition fails on the grounds of prior publication, and otherwise lacking novelty.

The opponent has argued that the invention lacks an inventive step. The only relevant evidence is a 9-line paragraph in the affidavit of Fallquist, where he asserts that in the period prior to the priority date:

"it was clearly known that variations in the relevant values ... produced variations in the properties of the containers. It is my opinion that it would have been obvious for a developer of such containers to experiment with different values to obtain a particular result. In fact it is my opinion that these dimensions were being modified to obtain various desired structural results."

In my view this is strongly suggestive of ex post facto assessment of the circumstances. It is no more than an unsupported assertion that the invention is obvious. It is also interesting to note the relevant dimensions in one of the drawings that is nominally common to the declarations of Halasz and Fallquist. The earlier drawing gives relevant ratios that fall within the scope of the claims, whereas in the later drawing one of the ratios apparently falls outside the scope of the claims. That is, the apparent development of the can between the earlier and later drawing was contrary to the teachings of the present invention.

I am thus satisfied that the evidence fails to establish the invention claimed is obvious.

The statement of Grounds and particulars also lists a number of alleged section 40 defects. In summary, they fall into four categories:

1. that the qualifying terms 'improved' and 'desired' are unclear;

1. a lack of antecedent in claim 1 for 'said axis';

1. qualifying numerical values with 'about' renders the scope of the claims unclear; and

1. claim 13 is redundant in the light of claim 6.

With regard to the first of these, the things being qualified are defined in the specification. In my view the terms 'improved' and 'desired' are of the nature of a puff and do not affect the clarity of the claim.

With respect to the antecedent issue, the claim earlier refers to a 'central axis', and later to a 'said central axis'. In my view the reference to 'said axis' can only be construed as a reference to the central axis, and there is no lack of clarity.

The term 'about' is used to qualify the numerical values specified in the claims. In my view the effect of the use of this term reflects the situation in Catnic Components Ltd v Hill and Smith Ltd, (1982) RPC 183, wherein the term 'extending vertically' was construed in context as meaning 'near enough to vertical to enable ...'. In my view 'about' is used in the present claims to make clear that there is some small degree of latitude concerning the specified numerical values, and the person skilled in the art would have no difficulty understanding this.

Finally, it is said that claim 13 is redundant having regard to claim 6. Claim 6 is dependent upon any one of claims 1 to 5; claim 5 is dependent upon claim 4; and claim 4 is dependent upon any one of claims 1 to 3. Claim 13 is apparently identical to claim 6 as dependent upon claim 5 through claim 4 to claim 1. I note however that, following claim 6 through its various dependencies, it has 12 alternative constructions (by my reckoning) - only one of which is identical to claim 13.

At the hearing I specifically asked Mr Royal to address the issue of redundancy; he stated that he did not understand the issue being raised. He also asserted that there may be situations where claim 6 would be held invalid, but not claim 13 - illustrating a lack of redundancy.

The philosophy behind refusing a claim which is identical in scope to another claim in the same specification (i.e. a redundant claim) is that no effective meaning can be ascribed to the redundant claim, or that it represents (if the application proceeds to grant) a double patenting situation. In Beloit Corporation's Application [1974] RPC 478 at p.483 Graham J. held that as there was no difference or no substantial difference between two particular claims, the applicants ought not to be granted a patent:

"I do not consider that the applicants ought to be granted a specification in which two independent claims of the same scope are present. To allow the grant of such a specification would be against the public interest and its effect would be to sacrifice clarity and succinctness, which is required by section 4, and to condone avoidable obscurity and ambiguity." 

In the present case, claim 13 is not of the same scope as claim 6 - it is of the same scope as one form of claim 6. I do not think that it is appropriate to use the concept (developed in relation to prior claiming situations) of notional rewriting a claim, to assess whether claims are redundant. Consequently I am not satisfied that claim 13 is redundant over claim 6.

Conclusion

I have:

-directed that the statement of grounds and particulars be amended;

-refused leave to serve further evidence;

-found that the opponent has failed to establish that the material on which it relies was published before the priority date; and

-found that the opposition was unsuccessful on all grounds.

As a consequence, there is no need to provide the applicant with any opportunity to address me on matters relating to the amended statement of grounds and particulars, nor on the further evidence.

Consequently, subject to any appeal, I direct the application proceed to sealing.

Costs

In actions before the Commissioner, costs normally follow the event. In the present case, there were three distinct matters, of which the applicant was successful in two, and the opponent on one. I also note that the matter of the further evidence arose only days before the hearing. Also, the present hearing arose initially from an objection to the amendment of the statement; subsequently the applicant requested the hearing also be in respect of the whole opposition. While the proceedings have been expedited by hearing all matters together, the award of costs in the present case should reflect the likely award if the amendment to the statement had been heard separately. Consequently, I award full costs in respect of any matters covered by items 1 to 8 of Part 1 of Schedule 8, and 50% of other costs covered by Schedule 8, against the opponent.

D Herald
Deputy Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

Patent attorneys for the opponent   :  Carter Smith & Beadle, Melbourne