Bally Gaming International, Inc v I.G.T. (Australia) Ptylimited

[1996] APO 50

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 664384 in the name of Bally Gaming International, Inc

Title:          Gaming Machine Information, Communication and Display System

Action:          Opposition by Aristocrat Leisure Industries Pty Ltd and a request for dismissal of the opposition

Decision:          Issued            .

Abstract:          Request for dismissal refused.  Certain particulars found inadequate including particular relating to lack of manner of manufacture which only referred to 11 documents.  A direction for further and better particulars issued.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent application no. 664384 by Bally Gaming International, Inc, opposition thereto by Aristocrat Leisure Industries Pty Ltd and a request for dismissal of the opposition

background

Bally Gaming International, Inc (Bally) filed patent application 664384 on 23 September 1992.  The application was advertised as accepted on 16 November 1995. Aristocrat Leisure Industries Pty Ltd (Aristocrat) filed a notice of opposition on 16 February 1996 and served its statement of grounds and particulars on 16 May 1996.

On 14 June 1996, Bally filed a request for the opposition by Aristocrat to be dismissed together with submissions in support of that request.

The matter was heard in Canberra on 13 September 1996.  At the hearing, Mr J. Roger Green, patent attorney of Carter, Smith & Beadle, Melbourne, represented Bally.  Aristocrat was represented by Mr Brett Lunn and Mr Chris Owen, patent attorneys of F B Rice & Co, Sydney.

THE STATEMENT OF GROUNDS AND PARTICULARS

Aristocrat’s statement of grounds and particulars lists four grounds of opposition viz. the claimed invention is not for a manner of manufacture, the claimed invention is prior published or otherwise not novel, the claimed invention lacks an inventive step and the specification does not comply with section 40(2) or (3).

In relation to the ground of lack of manner of manufacture, the one particular lists 9 patent documents and 2 manuals.

In relation to the ground of prior publication or lack of novelty, the same documents are referred to.  A further particular identifies occurrences of prior use of two gaming systems in various NSW locations and specifies particular dates of that prior use.

In relation to the ground of lack of inventive step, there are four particulars, the first of which states that the claimed invention lacks an inventive step in relation to the common general knowledge.  The second particular lists 7 pieces of information which it alleges will be proven to be part of the common general knowledge by evidence to be adduced.  The third particular under this ground alleges that the claimed invention lacks an inventive step in the light of any one or more of the same 11 documents that were listed in previous grounds. The fourth particular refers to the examples of prior use referred to in the previous ground in support of the ground of lack of inventive step.

In relation to the ground of lack of compliance with section 40, the particular identifies 3 passages where alleged defects are located in the specification.

THE REQUEST FOR DISMISSAL OF THE OPPOSITION

In support of its request for dismissal, Bally has provided the following reasons:

Ground 1

The opponent has not set out why the claimed invention is not a manner of manufacture in the light of the 11 listed documents.

The claimed invention is so clearly a manner of manufacture that this ground has manifestly no chance of success.

Ground 2

The opponent has neither briefly nor generally identified what information in each of the 11 documents is relied upon.  This is clearly contrary to the requirements of a statement of grounds and particulars as set down in ICI v Irenco Inc and Others 26 IPR 154.

There is no indication of the actual publication dates of the documents.

In relation to the alleged prior use or prior sale, there are no details of the actual systems.  Although trade marks or trade names have been used this does not sufficiently identify the nature of the systems.  Therefore the applicant has not been informed of the case it has to answer.

Ground 3

There is no indication of the relevant person skilled in the art.

In relation to the reference back to the 11 documents, the particulars refer to lack of inventive step in view of one or more of these documents. This use of “or more” has no basis in law because there is no particularisation of why a person skilled in the art would treat them as a single source of information as required by section 7(3) of the Patents Act 1990. Similarly there is no indication why the alleged examples of prior use would be considered together.

SUBMISSIONS

Both parties provided me with written summaries of their submissions as well as oral submissions at the hearing.

In relation to Bally, I have summarised below the main points made at the hearing by Mr Green but have excluded those which I have already referred to above in relation to the request for dismissal:

• The present statement of grounds and particulars does not provide sufficient detail for the applicant to understand the case to be defended.

• The particulars in relation to ground 1 do not specify anything about a threshold test or any other aspect of lack of manner of manufacture which is being relied upon.

• As indicated in ICI v Irenco(supra), any more than 7 to 10 documents listed under a particular ground would place an unreasonable burden on the applicant in determining the case against it.

• There is no indication of where the manuals referred to are available.

• There is no particularisation of which citations are relevant to which claims.

• The particulars in relation to the ground of lack of inventive step do not establish a prima facie case to answer and therefore this ground should be dismissed.

• In referring to page 2, lines 5 to 22, the opponent is referring to desirable features and not essential features of the invention.

• The opposition should be dismissed either wholly or in part and/or the Commissioner should issue directions for the opponent to provide further and better particulars.

I have summarised Mr Lunn’s submissions as follows:

• General Steel Industries Inc v Commissioner of Railways (NSW) and others (1964) 112 CLR 125 and L’Air Liquide v CIG Ltd 24 IPR 77 set out the relevant considerations for dismissing an opposition.

• Ground 1 is adequately particularised.   In NV Philips v Mirabella (1995) AIPC 91-196, it was decided that section 18(1) imposes a threshold requirement for an alleged invention before the subsequent requirements of this section are met. It is not manifestly obvious that this ground will not ultimately be successful.

• NV Philips v Mirabella (supra) demonstrates that it is allowable to allege an invention is not a manner of manufacture on the basis of prior art disclosure.

• The term “manner of manufacture” is used in the Patents Act. The applicant should not need any further explanation of this term in the particulars.

• In relation to the 11 listed documents, 8 of these have already been made known to the applicant as they were cited against the present Australian application and the corresponding EP and US applications.

• In Dominion Mining Ltd v Technological Resources Pty Ltd, 31 IPR 608, the delegate indicated that it was not appropriate to set down a numerical limit on the number of particularised documents which was appropriate. Each case should be treated on its merits.

• Publication dates are a matter of evidence.

• In relation to the particular identifying prior use, sufficient detail has been provided.  The actual nature of the systems described is a matter of evidence but the references “Computa Game Version 1” and “Computa Game Version 2” do, in fact, provide a precise definition of which version of the system is being referred to.  This is quite distinct from the use of a chemical trade mark which was referred to in E I DuPont de Nemours V DowElanco 30 IPR 25 where it was pointed out that the constituents could change even though the same trade mark could be used.

• In relation to ground 3, Borden v Elkem 24 IPR 146 sets out the degree of particularisation necessary for common general knowledge. While the present particulars do not specifically identify the person skilled in the art, the case that the applicant has to answer is clear.

• With respect to the list of documents and the use of the words “or more”, the applicant is not faced with an onerous task in identifying the case it has to answer given the nature and number of the documents.  However the opponent is prepared to amend the statement by deleting the words “or more”.

• The section 40 matter is an issue which should be considered in the substantive opposition.

DECISION

Dismissal of the opposition

Dismissal of an opposition is covered by the provisions of regulation 5.5 of the Patents Regulations 1991 which reads as follows:

"Dismissal of opposition

5.5 (1) An applicant may:

(a)       within 1 month of being served with a copy of a statement by an opponent under              subregulation 5.4 (1) ("filing of statement"); or

(b)       if the complete specification in relation to an opposed application is re-examined              under subsection 97 (1) of the Act ("re-examination of complete specifications") -    within 1 month from the day when  the re-examination is completed under    regulation 9.5 ("completion of re-examination);

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 the dismissal of the opposition."

The reasons for dismissing an opposition are similar to the reasons for summary dismissal which are described in General Steel Industries Inc v Commissioner for Railways (NSW) and others (supra).  The relevant passage is:

"..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".

From this, I deduce that I should dismiss this present opposition only if I am satisfied that the opposition cannot possibly succeed.

I am not so satisfied.

While the applicant has provided argument on the purported deficiencies of each of the 8 particulars listed in the statement of grounds and particulars, there is no convincing argument by the applicant to persuade me that the opposition could not possibly succeed.  The main thrust of the applicant’s argument has been aimed at establishing that the particulars are deficient rather than that the opposition is wholly untenable.

I refuse the request to dismiss the opposition in its entirety.

However, as the applicant has pointed out to me, where an opposition is not dismissed in total, it is possible for the Commissioner to dismiss individual grounds of opposition where those grounds are unsupported by any of the corresponding particulars.  In this respect, the applicant directed me to L’Air Liquide v CIG Ltd (supra).  In this respect I note that, as indicated in Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd 24 IPR 368, I should not dismiss a ground of opposition merely because it is not supported by some, only, of the particulars.

In looking at each of the individual grounds, I should consider whether or not each is “so manifestly faulty that it does not admit of argument”. (General Steel Industries v Commissioner for Railways (supra)).  In doing so, I am unable to reach the conclusion that any of the grounds fall into this category.

It seems to me that the most contentious of the grounds is that dealing with lack of manner of manufacture.  It is this ground that the applicant pressed most strongly as being without any chance of success.  The applicant argued that the claims were so clearly a manner of manufacture and the opponent had not particularised why it was not e.g. there was not suggestion that the claimed invention was a mere collocation or involved analogous use etc.

However I agree with the opponent that the issue of manner of manufacture has been dealt with in Philips v Mirabella (supra) where the threshold requirement of a patentable invention is set out as being that it has to have the necessary quality of inventiveness to be a manner of manufacture.  It seems to me that the ground is sufficiently particularised that I cannot say that it is so manifestly faulty so as not to admit of argument.

I am of the opinion that each of the grounds on the face of it would have some chance of success.  Therefore I refuse the request to dismiss the opposition in part.

In summary, I refuse to dismiss the opposition either in whole or in part.

Direction to provide further and better particulars

In Mobay Corporation v The Dow Chemical Company (1992) AIPC 90-895, the delegate indicated that it was possible for the Commissioner to issue a direction for further and better particulars. In discussing the appropriateness of such a direction, the delegate referred to B.C. Cairns in Australian Civil Procedure (1985) at page 116 as follows:

"A distinction must be drawn between a failure to plead a material fact with sufficient particularity and a failure to plead a material fact at all.  Failure to plead a material fact at all may not be remedied by particulars.  But where a material fact is pleaded, but not with sufficient particularity, then it is proper for it to be supplemented by particulars."

In the present case, the applicant has requested such a direction for further and better particulars.  I will consider the particulars in relation to each of the four grounds set out in the statement of grounds and particulars.

Ground 1 - Lack of manner of manufacture

Despite the fact that I have indicated that the opponent may have some chance of successfully establishing this ground, I agree with the applicant that the particular is inadequate.  The reference to a list of 11 documents does not adequately identify to the applicant what the significance of those documents are in relation to lack of manner of manufacture.  While it might be readily apparent under the ground of prior publication and lack of novelty what such documents are to be used for, it is not so apparent under the ground of lack of manufacture.  For example are the documents to be used to establish that the claimed invention is a mere collocation or that the claimed invention involves analogous use?

I find that particular A in relation to ground 1 insufficiently identifies the case the applicant has to answer.

Ground 2 - Prior publication or lack of novelty

In relation to the number of particularised documents, it is true, as submitted by the applicant, that some earlier office decisions placed a numerical limitation on the number of particularised documents which would place a reasonable burden on the applicant.  Mr Green referred me to ICI v Irenco (supra) where 7 to 10 documents was thought reasonable.  However, I note the delegate’s comments in Dominion Mining Ltd v Technological Resources Pty Ltd (supra) where the delegate stated:

“The decisions in ICI v Irenco (supra) and DuPont v DowElanco (supra) state that a large number of documents provide no particulars at all and that more than 10 documents may be too many unless specific page and line references are given.  However I do not believe that we can set down any rigid numerical limit.   Each case must be treated on its merits taking all relevant factors into account.  The overriding consideration must be whether the applicant can reasonably be expected to understand the case presented.  Just because there are more than 10 documents does not necessarily mean that the applicant will be unable to understand the case against them.  What it means is that there may be a need for further particularisation and this must be considered in the light of the specific facts of the case.  Further, it would be only in very unusual circumstances that citing more than 20 documents could be adequate without further particularisation.

In this case I do not think that 16 documents is too many.  The opponent has, additionally, categorised these documents by technical content combined with an assessment of their relative relevance.  Despite the applicant's arguments that this extra information was of no assistance, I find that it gives them sufficient extra information about the documents and their relevance that, even with 16 documents, they could be reasonably expected to understand the opponent's case.”

I must agree with the delegate that each case should be considered on its merits and that there should be no numerical limit placed on the number of documents which can be particularised.  The criterion I should rely upon, I believe, is whether or not the applicant is reasonably able to understand the case it has to answer.

In the present case, Mr Lunn argued that 8 of the 9 patent documents had been culled from 33 documents cited during the prosecution of the present application and its equivalents through various patent offices.  Notwithstanding Mr Green’s argument that the citations had been found not to be relevant by the patent examiner in the Australian Patent Office, I agree with Mr Lunn that the applicant has hardly been provided with an overly onerous task in determining the case it has to answer in relation to these documents.  I do not consider that particular A under ground 2 is inadequate in relation to these patent documents.

In relation to the listing of 11 documents, I do not have before me the actual particularised documents.  However, I have taken the liberty of considering the claimed invention and have come to the conclusion that the claimed system consists of very generalised features e.g. a machine having a central processor, control means, a card reader and keypad, a display and an interface between the reader, key pad and control means.  I do not believe that such technology would require extensive examination of related documents to identify whether or not the claimed system was prior published.  Therefore I do not believe that the listing of 11 documents in the present case would place an undue burden on the applicant in determining the case it has to answer.

In this respect, I note the words of Cotton LJ in Holliday v Heppenstall (1889) 6 RPC 320 at 327, in relation to whether or not certain particulars concerning anticipating documents should be amended:

“I do not think it would be right to bind them to state what the particular pages are of the books on which they rely as regards the anticipations.  That might throw a burden on them, and prevent possibly their case being properly brought forward before the Court, if by some accident they had not properly specified, or had omitted a page on which they intended to rely as regards anticipation....”

While these comments relate to particulars in court proceedings, it seems to me that they are equally relevant to the present proceedings.

Although the applicant has argued that there is no cross-reference between the citations and the relevant claims, I believe that the content of each of the claims is such that the applicant would not be particularly burdened in identifying which citations are relevant to which claims.  I do not see the need to direct that the particulars be amended to include these references.

The applicant has argued that the location of the two particularised manuals has not been identified.  Therefore the applicant is not able to locate these manuals to identify the case it has to answer.  However, I note that the identification of these manuals has been quite specific in the particulars in relation to their versions and authors.  For example, the first manual is identified as “‘Computa Game Equipment Manual’ Revision 1, Computa Game Pty Limited, September 1990, Written and Compiled by Russell Campbell.”  Given the quite specific identification of these manuals and given the fact that I have neither evidence nor submissions before me to indicate what unsuccessful attempts the applicant has made to locate these manuals, I am not prepared to say that this particular is deficient.

In relation to publication dates, I agree with Mr Lunn that this is a matter for evidence.

I find that particular A under this ground is not so inadequate that the applicant is not able to determine the case it has to answer.

In relation to particular B, the applicant submits that there are no details of the actual system allegedly demonstrating prior use.  The use of trade marks or names do not assist in this identification.  I note that the particular identifies the company selling the systems, the date of sale and or use, the locations of use and the particular versions of the system being referred to.  In deciding the adequacy or otherwise of this particular, I note sub-regulation 12.4 (2) of the Patent Regulations 1991.  This sub-regulation deals with the degree of particularisation required in a prescribed court for revocation proceedings.  It is therefore not directly relevant to the present proceedings but I find that it does provide me with some guidance on what might be required in the present case.  In particular I note sub-regulation 12.4 (2)(b):

“If 1 of those grounds is that the invention is not a patentable invention because of information about the invention in a document or through the doing of an act, the particulars must specify:

(b) in the case of an act:

(I)the name of the person alleged to have done the act; and

(ii)       the period in which, and the place where, the act is alleged to have been   done publicly; and

(iii) a description that is sufficient to identify the act; and

(iv)      if the act relates to apparatus or machinery - whether the apparatus or   machinery exists and, if so, where it can be inspected.”

It seems to me that Aristocrat has met most of the above requirements.  While the name of a particular person is not identified, I am satisfied that the naming of the particular company is sufficient identification.  However, I think that the applicant needs to know if the apparatus still exists and, if so, where it can be inspected.  Otherwise, the applicant is unable to determine the case it has to answer.

However, I agree with Mr Lunn that the issue of trade marks is more likely to be relevant to chemical compounds than gaming systems when it comes to the question of deciding whether or not a particular product has had its components/constituents changed.

I find that particular B does not adequately allow the applicant to determine the case it has to answer in that there is no particularisation of where the system can be inspected.

Ground 3 - Lack of inventive step

Although the applicant argued that  the particulars are deficient because they do not identify the person skilled in the art or the particular field of technology under consideration, I believe that this is self-evident from the nature of the claimed invention and the list of alleged common general knowledge set out in particular B.

I do not think that particular B is inadequate.

In particular C, in relation to the phrase “any one or more”, Bally has argued that there is no particularisation of why a person skilled in the relevant art would treat two or more of the documents referred to as a single source of information.  While it is a matter for evidence whether or not a person skilled in the art would combine two or more of the patent documents, I believe that the applicant is entitled to know which of the combinations of patent documents out of the many permutations are going to be relied upon by the opponent.  I note that the opponent has volunteered to remove the wording “or more” from the particulars.

I find particular C to be inadequate.

In particular D, I do not believe that the use of “or more” in relation to the two prior use examples offers the same degree of confusion to the applicant especially as these two systems are labelled “version 1” and “version 2”.  It seems to me that there could be some probability that a person skilled in the relevant art could consider them both to be a single source of information.

I do not find particular D inadequate.

Ground 4 - Lack of compliance with section 40

I agree with Mr Lunn that the issue raised by the applicant should be dealt with at the substantive opposition.  The particular itself is not deficient as the applicant has demonstrated that it knows the case it has to answer.

CONCLUSION

I refuse the request to dismiss the opposition in its entirety.

Consequently, pursuant to regulation 5.8(1)(iii), the time for serving evidence in support commences on the date of this decision.

However, I find that particular A of ground 1, particular B of ground 2 and particular C in relation to ground 3 are so inadequate as to not allow the applicant to determine the case it has to answer.  I do not consider that these inadequate particulars should be maintained. Consequently I direct the opponent to provide further and better particulars to set out material facts in relation to these particulars.

I further direct that the further and better particulars be provided by way of amendment to the statement (under regulation 5.9), within 21 days of the date of this decision.

Finally, I direct that if further and better particulars are not provided within this time, the relevant particular will be unavailable for argument at the hearing in the opposition.

COSTS

Both parties argued that costs should follow the event.

The applicant has been unsuccessful in having the opposition dismissed either wholly or in part.  However the opponent has provided inadequate particulars in relation to a number of the grounds of opposition.  In these circumstances, I make no award of costs.

R. Hallett
Delegate of the Commissioner of Patents

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

Patent attorneys for the opponent   :  F B Rice & Co, Sydney