BP Corporation North America Inc. v ExxonMobil Upstream Research Company Summary

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ExxonMobil Upstream Research Company v BP Corporation North America Inc
[2012] APO 103

Patent Application: 2003272747

Title:LNG system and process with electrically powered refrigerant compressors and combined power generation cycle

Patent Applicant:  BP Corporation North America Inc.
Opponent:  ExxonMobil Upstream Research Company
Delegate:  Dr S.D. Barker
Decision Date:  19 September 2012
Hearing Date:  Written submissions filed on 9 July 2012 on 23 July 2012
Catchwords:  PATENTS – extension of time to serve evidence in reply – evidence has been completed – nature and significance of evidence considered – on balance an appropriate case made out

Representation: Patent applicant: Shelston IP
Opponent:Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2003272747

Title:LNG system and process with electrically powered refrigerant compressors and combined power generation cycle

Patent Applicant: BP Corporation North America Inc.
Date of Decision: 19 September 2012
DECISION
I grant an extension up until 24 July 2012. The effect of this extension is to validate the final declaration of Mr Tsesmelis, dated 23 July 2012.
I award costs against BP Corporation North America Inc.
REASONS FOR DECISION

BP Corporation North America Inc is the applicant for patent application 2003272747. ExxonMobil Upstream Research Company has opposed the grant of the patent. The present action relates to a request by Exxon to extend the time for serving evidence in reply (from 25 June 2012 to 25 July 2012). BP has objected to the extension. The matter was heard on the basis of written submissions.
The law
Regulation 5.10(2) of the Patents Regulations 1991 gives the Commissioner the power to extend the time for serving evidence in reply. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5)(b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
The considerations relevant to this question have been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
a)The reason why the evidence was not served earlier (Ferocem at 247),
b)The public interest in determining a serious opposition on its merits (Goninan at 222), and
c)The interests of the parties (Ferocem at 247).
Consideration
At the outset, I note that the evidence in reply has been completed on 24 July 2012. In BHP Billiton Worsely Alumina Pty Ltd v Alcoa of Australia Limited [2012] APO 60 at paragraph 6, I noted that there is little useful purpose in an objection once the evidence has been completed. Nevertheless, as in BHP it is still necessary to briefly consider the merits of the extension.
Explanation of delay
The application for extension of time states:
“Evidence in reply has been prepared as an expert report, by Mr Costa Tsesmelis … the evidence is complete bar a final review by in house counsel who the undersigned will be visiting in Houston on 29 June 2012 … Following the Houston meeting, it is expected that the evidence will be concluded by week commencing July 16 … The evidence in reply, including that already served by the undersigned, is submitted to be of substantial assistance in resolving the present Opposition with the case being of considerable weight.”
While it is apparent that the extension is to enable counsel to review the evidence of Mr Tsesmelis, it is not clear why this was not completed earlier. It is not clear why the review by counsel could not be conducted without a personal visit from Mr Baddeley.
The opponent’s submissions throw little extra light on the delay. I conclude that some explanation of delay has been provided, but not as much as I would have expected.
Public interest
The public interest is assessed by having regard to the nature and significance of the evidence. The final evidence is a report by Mr Tsesmelis. The opponent’s submissions state that it
“addresses the evidence in answer taking into account features introduced by the amended claims. The expert report provides significant detail as to the common general knowledge on power generation for LNG plants in Australia before the priority date.”
At another point the submissions say:
“The expert evidence is very shortly to be served and its import to the issues of novelty and inventive step will be directly apparent”
While brief, this suggests that the evidence could be significant.
In a letter dated 9 August 2012 the applicant acknowledged service of this evidence. The applicant stated in this letter
“The evidence of Mr Tsesmelis introduces four new documents, which are annexures CMT-23 to CMT-26. In paragraph 17 of his declaration, Mr Tsesmelis states that he would have regarded documents CMT-24 and CMT-25 as relevant as at the priority date. Mr Tsesmelis also states in the same paragraph that if the opposed application is not entitled to its priority date, he would have regarded documents CMT-23 and CMT-27 as relevant at the filing date. The Applicant therefore understands that the Opponent purports to rely on these documents at least pursuant to section 7(3) of the Patents Act. It is not clear whether the Opponent also seeks to rely on these documents for the purposes of section 18(1)(b)(i). In this regard, the Applicant emphasises that the documents have not been pleaded in the Applicant’s [presumably Opponent’s] Statement of Grounds and Particulars of Opposition. … This evidence is, in substance, additional Evidence-in-Support of the opposition, which the Applicant has not had an opportunity to answer.”
I have quickly inspected the Tsesmelis declaration, and it is true that several documents are attached as Annexures. However, it is not clear whether these are introduced as new citations. Regardless of this, it seems that Mr Tsesmelis is, at least in part, responding to the evidence in answer. I remain satisfied that the evidence could be significant. If any of the evidence should properly be the subject of further evidence, that is a matter that the opponent will need to address by making an application to serve further evidence. Such an application should be made as soon as possible.
Interests of the parties.
The opponent strongly argued that “it will be prejudiced if its evidence in reply is not admitted in its totality”. The applicant referred to the delays in preparing the evidence in reply, and their lack of confidence that the evidence in reply will be completed within the present extension. It is now apparent that that concern was not well founded.
Balance of considerations
Having identified the relevant considerations, it is necessary to weigh them so as to determine whether an extension is appropriate. On the one hand, the explanation of delay is inadequate. On the other hand, the nature of the evidence supports the extension. In the present case these considerations are not of equivalent weight - the explanation of delay, while inadequate, is not so inadequate that it fully offsets the nature of the evidence. The balance of these considerations favours the extension, and the other considerations do not alter that balance. I conclude that the balance lies in favour of granting the extension. However, as the evidence was served on 24 July 2012, it is only necessary to grant an extension until that date.
I will grant an extension until 24 July 2012.
Costs
The opponent has been successful in making out an appropriate case. In these circumstances costs should be awarded against the applicant.
Dr S.D.Barker
Delegate of the Commissioner of Patents

In the matter of patent application 2003272747, BP Corporation North America Inc. is the patent applicant, while ExxonMobil Upstream Research Company has opposed the grant of the patent. The dispute before the Australian Patent Office involved a request by Exxon to extend the time for serving evidence in reply, which BP opposed. The applicant argued that the extension was unnecessary and would prejudice their position, while the opponent contended that the evidence in reply was crucial for resolving the opposition. The matter was heard on the basis of written submissions.

The legal issues at hand centred on the application for an extension of time to serve evidence in reply, as governed by Regulation 5.10(2) of the Patents Regulations 1991. The Commissioner had the discretion to grant an extension, provided certain conditions were met, such as notifying the parties, giving them an opportunity to be heard, and being reasonably satisfied that the extension was appropriate. The key considerations for granting an extension included the reason for the delay, the public interest in determining the opposition on its merits, and the interests of the parties involved.

The Commissioner, Dr. S.D. Barker, examined the reasons for the delay, the public interest, and the interests of the parties. The opponent's evidence in reply, completed on 24 July 2012, was considered potentially significant, and the Commissioner noted that it was in the public interest to have the evidence presented. Although the explanation for the delay was deemed inadequate, the Commissioner found that the nature of the evidence outweighed this consideration. As a result, the Commissioner concluded that the balance of considerations favoured granting the extension, and they granted it until 24 July 2012. Additionally, the Commissioner awarded costs against BP Corporation North America Inc. due to their successful application for the extension.

In summary, the Australian Patent Office granted an extension for the opponent to serve evidence in reply, despite objections from the applicant. The Commissioner found the evidence in reply to be of significant importance for resolving the opposition, and granted the extension while awarding costs against the applicant.

BP Corporation North America Inc. v ExxonMobil Upstream Research Company

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established