Beaumont Gregory Lyons v Jonathon Charles Albert Noble

[2006] APO 40

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No.757504 in the name of Beaumont Gregory Lyons

Title:          A Hammock Stand

Action:          Request to serve further evidence in respect of an opposition under s59 and s104 by Jonathan Charles Albert Noble

Decision:          Issued     20 December 2006      .

Abstract

The opponent requested leave to serve further evidence in an opposition in which the s59 and s104 oppositions on the matter had been conducted.  Specifically, the opponent sought to adduce further evidence relating to claim construction issues and in particular it sought to adduce the examination reports made by the Australian patents examiner in the application in suit and by the US examiner in the corresponding US patent, US 6912744 (Lyons).  Furthermore, attorney’s submissions in these prosecutions were sought to be adduced.  Leave for these matters was not granted.

The opponent further sought to adduce those patent applications referred to in a filed s45(3) search result which were not already in evidence.  As this material was highly relevant to the issues of novelty and inventive step, leave was granted.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 757504 by Beaumont Gregory Lyons and opposition thereto under s59 and s104: Request to serve further evidence and objection thereto by Beaumont Gregory Lyons.

BACKGROUND

1. Patent application 91353/01 was filed on 15 November 2001 by Beaumont Gregory Lyons (Lyons) and claimed priority from an Australian provisional application PR1504 dated 17 November 2000.  The application underwent expedited examination and was advertised as accepted on 20 February 2003. 

2. Opposition was filed by Jonathan Charles Albert Noble (Noble) on 20 May 2003 and after 6 extensions of time evidence-in-support was completed.  After two extensions for time for serving evidence-in-answer, Lyons indicated on 22 February 2005 that he would not file any evidence-in-answer but instead filed an application under s104 to amend the specification.

3. In response to an invitation to provide comments on the amendments, Nobel filed comments on 11 April 2005.  On 7 July 2005, leave to amend was advertised as accepted and on 7 October 2005, a notice of opposition was filed.

4. Both parties agree to a joint hearing for both oppositions.  Consequently, a hearing on the oppositions was set down for 7 July 2006 at Canberra.  Garry Adrian Wilson, patent attorney of Garry Wilson Patent and Trade Mark Attorney attended on behalf of the opponent, Noble.  Mr Trevor Dredge, patent attorney of Intellpro attended by phone on behalf of the patent applicant, Lyons. 

5. Since the hearing, a matter of further evidence has been raised and the current hearing has arisen as a result.  The history since the hearing is somewhat convoluted but involved a request under Patents Regulation 5.10(4), which was filed on 21 July 2006, for time in which to serve further evidence.  In this application, Nobel requested that he be allowed time in which to file evidence on claim construction and in particular sought to adduce the submissions by Lyons in the present case and in the corresponding application overseas US 6912744 (Lyons) to the respective examiners reports as well as the reports themselves.  In response to this application, I proposed a direction that the provisions of Patent Regulation 5.11 be used to bring the s45(3) results into the opposition as a matter of efficiency and that assertions made by the patent applicant during the prosecution history before the USPTO was not, prima facie, relevant to claim construction in Australia..  However, as neither party was in total agreement with this suggestion, I directed on 20 October 2006 that Nobel should file his further evidence and that a hearing on this matter should be set down.  On 6 November 2006 Nobel filed his evidence in the form of a statutory declaration from Garry Adrian Wilson.

6. The hearing was set down for Canberra on 29 November 2006.  Garry Adrian Wilson, patent attorney sent in submissions on behalf of the opponent, Noble.  Mr Trevor Dredge, patent attorney of Intellpro attended by phone on behalf of the patent applicant, Lyons. 

   THE EVIDENCE

7. The evidence sought to be adduced comprises a statutory declaration of Garry Adrian Wilson dated 27 October 2006.  The declaration was accompanied with a number of exhibits.

   Exhibit GAW001 is a copy of a letter dated 21 July 2006 from Noble regarding an application to adduce further evidence.

   Exhibit GAW002 is a copy of the examiner’s first report on the patent application in suit and a copy of the applicant’s response thereto.

   Exhibit GAW003 is a copy of a letter dated 18 April 2006 between the parties that refers to the Lyons US patent.

   Exhibit GAW004 is a copy of the granted US 6912744 (Lyons) 5 July 2005, US 20040160098 (Lyons) 19 August 2004 which has a filing date of 19 February 2003, copy of an extract from IPAustralia’s record on separate application 2003200537 entitled “a suspended chair” by the current patent applicant and a copy of that application.  The front cover of the US patent indicates that it has priority claim from AU PS0567 dated 15 February 2002.  As noted above the present application derives its priority from a provisional PS0567 dated 17 November 2000.

   Exhibit GAW005 is a copy of the US file wrapper and prosecution history before the USPTO.

   Exhibit GAW006 contains copies of the S45(3) results that were filed on 12 January 2005 and were not otherwise in evidence.

   THE RELEVANT LAW

8. Before granting a request to serve further evidence, the Commissioner must be reasonably satisfied that the serving of further evidence is appropriate in all the circumstances.  In Emory University v Biochem Pharma Inc. [1999] APO 50 (5 August 1999), the delegate, in exercising his discretion was guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 on the operation of regulation 5.10(5) in relation to extensions of time. The general principles that flowed from these decisions were:

9. The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements.  It is necessary to give genuine and proper consideration to all relevant considerations.  (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)

10. Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.  (Ferocem at AIPC 38,207-8; IPR 247)

11. The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration.  (Goninan at AIPC 39,435-6; IPR 222)

    In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings.  (Goninan at AIPC 39,438; IPR 225-6)

    The public interest is not protected merely because some evidence has already been served.  (Goninan at AIPC 39,438; IPR 225)

12. The interests of the party seeking the exercise of discretion:  The interests of the party seeking the exercise of discretion are a relevant consideration.  (Ferocem at AIPC 38,208; IPR 247)

    The interests of other parties:  It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office.  (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)

13. That is, the criteria to be considered arise from the need to balance a serious opposition being determined on its merits and determining an opposition as expeditiously as possible.

14. In Transgene SA v Virax Holdings Ltd [2002] APO 14 (17 April 2002), the delegate considered that the relevance of evidence was a key factor that Sackville J in Goninan (supra) considered relevant in deciding whether evidence should be allowed:

    “In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings.”

15. However, as Sackville J went on to explain, this does not mean that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits.  Rather, it is necessary to form a prima facie view of whether that evidence is likely to be important in the opposition proceeding given the nature of the issues addressed by the proposed evidence.  That is, is the evidence, which it is proposed to be served, based on the nature thereof and information supplied in the request, relevant to the action - in the sense that it would contribute to a more correct, just, or expeditious result?

16. A number of Patent Office decisions have previously adopted certain "criteria" in determining whether the serving of further evidence is appropriate in all the circumstances, as set out for example in Sandoz Ltd v Fujisawa Pharmaceutical Co. Ltd 27 IPR 421 and Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co 29 IPR 285. However, the reasoning in Goninin (supra) suggests that the requirements outlined in Sandoz (supra) and ICI (supra) are not prescriptive.  Instead, the questions asked in those cases are only a guide to help identify the relevant aspects of a case so that “proper, genuine and realistic consideration” can be given to them as required by Goninan (supra).

    DECISION

17. There are two main issues to be decided.  The first issue is whether the prosecution history before the US Patent Office including Lyons’ comments therein and whether the Australian examiner’s report are relevant considerations for adducing into the current proceedings.  The second issue is whether the documents referred to in the s45(3) search results can also be brought into the opposition.

    US File Wrapper, AU Prosecution History

18. The substantive bulk of the evidence sought to be adduced relates to the prosecution history before the US Patent Office.

19. A number of authorities have dealt with this issue.  The general principle that can be derived from authorities such as Prestige Group (Australia) Pty Ltd and Dart Industries 19 IPR 275 26 FCR 197, Baygol Pty Ltd v Foamex Polystyrene Pty Ltd [2005] FCA 145 (28 February 2005), and Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC [2006] FCA 1353 (10 October 2006) is that the US prosecution history (file wrapper) and the history of Australian prosecution would not be admissible as evidence in the current proceedings. I refer to paragraph 7 of the Ranbaxy (supra) decision.

    “This conclusion follows as a matter of basic principle. The construction of a patent is a question of law. Direct evidence of the patentee as to what he or she intended the patent to mean, or what he or she subsequently thought it meant, is not admissible. Nor is evidence that seeks to prove the same matters indirectly by adducing evidence of documentation brought into existence prior to the relevant patent application or subsequent to it: see Glaverbel SA v British Coal Corporation [1995] RPC 225 at 268 per Staughton LJ. Thus, documentary evidence disclosing the intentions, opinions or submissions of the patentee, such as that which might be found in communications with the patent office where the patent was granted or in subsequent communications with foreign patent offices, is not admissible: see Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] 1 All ER 667 (‘Kirin-Amgen’) at 681-682 [35] per Lord Hoffmann and Baygol Pty Ltd v Foamex Polystyrene Pty Ltd (2005) 64 IPR 437 (‘Baygol’) at 442 [21] per Tamberlin J.”

20. Mr Wilson submitted that the evidence goes to claim construction.  But this issue is dealt with directly in Ranbaxy (supra).

    “To be admissible in its case, the documents would have to go to a relevant issue. The only issue identified was that of construction of the Basic Patent and, in my opinion, the documents are not admissible on that issue.”

    The reality of the situation, it seems to me, is that Ranbaxy is attempting to tender opinions or submissions of the patentee or its agents, or documentary evidence of their intentions, because they are consistent with Ranbaxy’s submissions on the question of construction. The cases are clear that such evidence is not admissible for that purpose.

21. Consequently, neither the US “file wrapper” nor the prosecution history before the Australian patents office are relevant considerations for deciding on claim construction issues.

22. However, I note that both parties have directed my attention to a specific paragraph in the US file wrapper relating to the discussion of the HOWE document before the US Patent Office.  I pressed Mr Dredge on whether this paragraph constitutes his submissions in relation to the HOWE document.  While his response was not definite he indicated that it was just “an illustration of the point” that HOWE was not relevant.  Mr Dredge indicated that the proposed amended claims were drafted to avoid the HOWE document and any of the other documents that were cited against the claims.  He submitted that the HOWE document was not relevant.  While it could be argued that Mr Dredge has requested me to bring the relevant paragraph from the US file wrapper into the opposition, it is my view that to bring this paragraph into the opposition would also involve other paragraphs of the file wrapper and further discussion on the US prosecution history.  This seems to be an inquiry that the authorities would loath to have me make.  Consequently, this paragraph should not be admitted.

23. Nobel also sought to place reliance upon the examiner’s first report to demonstrate a particular construction.  The same comment that I made in relation to the US file wrapper is made here in reference to the examiner’s report.   

24. It follows that paragraphs 1 to 28 of the Wilson declaration which contain references to these matters are not relevant and hence, are not admissible into evidence. 

    US 210037 (HOWE)

25. Paragraphs 29 to 31, which discuss the US 210037 (HOWE) 19 November 1878 document, introduces material that is highly relevant and potentially determinative of the opposition and should be admitted.  It is important that the issues raised by HOWE patent specification receive proper and full consideration by the delegate.  I note that this document is more relevant than those currently in evidence before the delegate.  Consequently, the HOWE document is admissible.  However, the contents of the paragraphs 29 to 31 which discuss the HOWE document are merely submissions; they are not evidence.  Consequently, these paragraphs are not admissible.

    S45(3) Results

26. As previously indicated exhibit GAW006 contains those copies of the s45(3) search results from the equivalent US family member that were not otherwise in evidence.  Apart from specific discussion of the HOWE document, no specific and detailed submissions on relevance were received on the remainder of these s45(3) documents.  A review of these documents indicates that they are highly relevant to the issues of novelty and inventive step, especially in relation to the claims as accepted.  Given the importance of timely resolution of issues in a fair and expeditious manner, it seems to me to be important that the delegate should have this material before him or her in coming to a proper determination of the opposition.  Therefore, exhibit GAW006 is admissible.

27. Mr Wilson, in paragraphs 32 and 33 of his declaration made reference to a letter of the Commissioner dated 12 October 2006 that referred to a number of matters including a discussion of the S45(3) results.  This letter also stated that the documents that are now sought to be adduced were highly relevant to the current claims of the patent application.  While, I also share this view on the relevance of the documents, this view is grounded in my review of the evidence and not on the contents of the letter.  It follows that paragraphs 32 and 33 of the Wilson declaration which contain a reference to the exhibit GAW006 add nothing of relevance and hence, are not admissible into evidence. 

    Delay

28. Lyons submitted that Nobel should have been aware of the S45(3) documents as the notice was filed on 12 January 2005 and that he should have commented at the hearing when the issue of s45(3) was raised.  In response, the Wilson declaration attested that the issue of s45(3) results only became important as a result of a claim construction issue that Lyons raised at the hearing and that this issue of claim construction was confirmed when the US file wrapper was consulted.  The hearing took place on 7 July 2006 and Mr Wilson first requested leave to adduce further evidence on 21 July 2006.

29. In explanation of the time delay from the 12 January 2005 to 12 September 2006, Mr Wilson referred to the fact that the US Patent and the Australian application were not linked by a common priority document as the US Patent has PS0567 (of 15 February 2002) as its priority document while the current patent application has PR1504 (of 17 November 2000) as its priority document and so the failure to locate the relevant US application is thereby explicable as a family member search, if conducted, would not have located the document.  While there are other search methodologies which would have located the existence of the foreign filed application, the earliest date would have been the publication date of the foreign filed application (i.e. 19 August 2004).  Thus, Noble had 9 months in which to locate the application before he filed his notice of opposition.  I note that there is no indication that Nobel had any watching service in relation to any foreign filed application.  There is also no evidence that he performed any check on the contents of the Australian file which if he had done so he would have realised post 12 January 2005 that there was a foreign filed application and as such it is reasonable to expect that Nobel would have put the relevant documents into evidence.  Lamentable as this is, once Nobel realised the existence of the application he acted with prompt and timely actions. 

    The Public Interest

30. The public interest lies in ensuring that the opposition is determined on its merits.  The evidence of the s45(3) results is a significant matter and is likely to lead to a more correct or just decision.  While the private interest of Lyons lies in the expeditious resolution of the issues, the public interest lies in ensuring that a proper consideration of all the issues should occur.  Therefore, the public interest, on the facts in this case, overrides the private interest of Lyons. 

    Orderly Administration of the Patent Office

31. It is obvious that almost 6 months have passed since the substantive hearing.  It is also clearly evident that the HOWE patent is an important document for consideration of the proposed amended claims.  If the s45(3) documents were not brought into evidence then the possibility of further action under the re-examination provisions of s97 of the Patents Act becomes a possibility and this would un-necessarily protract the proceedings before the Patents Office.  It is thus important that the proceedings be finalised as soon as practicable and that in the interest of orderly administration of the patent office the evidence indicated above should be adduced.  In my view, a serious opposition has been undertaken and it should be determined on its merits and it should also be determined as expeditiously as possible. 

    CONCLUSION

32. I have found that only GAW006 to Mr Wilson’s declaration is admissible into evidence.  I do not believe that this will cause any unnecessary protraction of the case as the evidence has been filed and as both parties have already made comments in relation to this material.  The public interest in having these materials considered is that “the admission of this evidence was likely to lead to a more correct or just result” per the delegates decision in University of Rochester v University of Queensland and CSL limited [2003] APO 4 (11 February 2003). In my view, the public interest outweighs the private interest of Lyons.

1. The failure of Nobel to identify the relevant prior art either from a search for any foreign filed co-pending applications or from a search of the patent office file itself, does not override the need for the Commissioner to consider relevant documents.  Lamentable as it is, I consider that it is appropriate in the circumstances that the evidence that I have identified as relevant be admitted.  I note that there are not a large number of documents involved and that only one (the HOWE patent) has been pressed against the proposed claims. 

2. Therefore, I grant leave to Nobel to serve the further evidence as identified above.  As the evidence has already been served and as both parties have already commented upon this evidence, I do not see any reason for any further delays in the delegate considering his decision on the substantive matters.  However, if this is not the case I allow the parties 21 days from the date of this decision to file any relevant submissions.

   COSTS

3. Costs usually follow the event.  As both parties have only been partially successful, an award of costs is not appropriate in the circumstances.

   G.M.COX

   Delegate of the Commissioner of Patents

   Patent attorneys for the applicant  : Intellpro, Brisbane, Qld

   Patent attorneys for the opponent   :Garry Wilson Sydney, NSW