Braas & Co GmbH v Humes Limited

[1992] APO 28

official notice

decision of a delegate of the commissioner of patents

Application        : No. 563861 in the name of Braas & Co 
  GmbH     

Title             : Process and Apparatus for Producing
  Concrete Roof Tiles

Action            : Opposition by Humes Limited under Sec 59
  and an application for special leave to
  adduce further evidence under Reg 59 by
  the opponent

Decision           : Issued            .  Application for
  special leave allowed.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 563861 by BRAAS & CO GmbH, opposition by HUMES LIMITED under section 59, and an application for special leave to adduce further evidence  under regulation 59 by the opponent

background

Patent application 563861 by Braas & Co Gmbh (Braas) was advertised accepted on 23 July 1987. On 16 October 1987 Humes Limited (Humes) lodged a notice of opposition to the application under sec 59(1) of the Patents Act 1952.

Evidence in support was served on 13 December 1988 (after four unopposed extensions of time) and evidence in answer was served on 12 January 1990 (also after four unopposed extensions of time).  Evidence in reply was served on 15 August 1990 after the grant of a further two unopposed extensions of time.  Up to this point, Humes had obtained extensions totalling 17 months, and Braas had extensions totalling 11 months.

The matter was initially scheduled for hearing in May 1991 but, due to the unavailability of the agent for Humes at that time, was re-scheduled for hearing during the period 18-22 November 1991.  However the re-scheduled hearing did not take place apparently because formal hearing notices were not sent out to either party.

On 27 November 1991 Humes lodged an application for special leave to adduce further evidence.  The application was accompanied by a statutory declaration by Mr Greg Pryor, the patent attorney responsible for the prosecution of the opposition on behalf of Humes.  Braas objected to the special leave application and I heard the matter in Canberra on 11 February 1992.  Braas was represented by Mr Greg Turner, patent attorney with Spruson & Ferguson, and Humes was represented by Mr Bruce Caine of counsel, assisted by Mr Pryor of Davies Collison Cave.

APPLICATION FOR SPECIAL LEAVE

The declaration by Mr Pryor indicates the grounds on which the application is made and the nature of the further evidence sought to be adduced in these terms:

"2. That in late October 1991 I had a conference with Bruce Crighton, the National Production Manager of Pioneer Roof Tiles Pty. Limited, which company is assisting in the opposition. I reviewed all of the evidence in the opposition with Mr Crighton and as a result of that review and subsequent enquiries a decision was made that certain parts of the opponent's evidence-in-support and evidence-in-reply would not be relied upon.

3. That in view of the decision referred to in the preceding paragraph, I advised that it would be prudent to seek to introduce further evidence into the opposition and to make further enquiries regarding available prior art which may now be available, having regard to the recent issue of the applicant's corresponding United States patent and also some possible Swedish prior art known to Mr Crighton from his visit to that country.

4. That I requested our associates in the United States to obtain and forward to us a copy of the file wrapper of Braas' corresponding United States Patent Serial No. 5,004,415.  On 18th November, 1991 I received a copy of the file history including the prior art cited and submissions made to the United States Patent Office. Now produced and shown to me marked GCP-1 is the cover page of U.S. Patent No. 5,004,415 which lists the references cited.  I have reviewed these documents and I have found that many of them are relevant to the opposition herein."

At the hearing Mr Pryor lodged a second statutory declaration in which he states:

"6.  As part of the preparation for the re-scheduled hearing of the opposition, I had a conference on October 30, 1991 with Bruce Crighton, the Managing Director of Globe Roof Tile Machines Pty. Limited. During the conference, I reviewed substantially all of the evidence in the opposition and I informed Mr. Crighton that I believed that we had a very strong case particularly in view of the exhibits to Mr. Whitelaw's declaration made on December 8, 1988 and the statements made in his declaration regarding the compacting of material at the nose of the tiles which was performed at a tile making plant at Ballarat.  Whilst Mr. Crighton was in general agreement with substantially the whole of Mr. Whitelaw's evidence, he was concerned that those parts of Mr. Whitelaw's evidence that dealt with compaction at the nose of the tiles produced at the Ballarat plant was inaccurate.
7.  As a result of discussions at the conference referred to in the preceding paragraph, in early November 1991, Mr. Crighton made a number of enquiries with former employees of the Ballarat plant to see if they had any recollection of whether any compaction occurred at the front edge of the tiles.  Mr. Crighton explained to me that two persons that he had contacted with knowledge of the subject matter advised him that unlike Mr. Whitelaw their recollection was that there was no compaction in the nose of the tiles produced at the Ballarat plant, as Mr. Whitelaw believed. In consequence, a decision was made that it would be improper to rely on those parts of Mr. Whitelaw's evidence which were thought might be inaccurate. Accordingly, the opponent proposes not to rely on those parts of the evidence-in-support and evidence-in-reply which state that there was compaction at the nose of the tiles produced at the Ballarat plant.

8.  In early November 1991, Mr. Crighton advised me that he was aware of some prior art which was directly relevant to the application which he knew about in Sweden and that he would make enquiries to see if any publication of that prior art material had occurred in Australia prior to the applicant's priority date.  I also recommended that we be instructed to check if Braas' had obtained a corresponding United States Patent.

9.  On November 6, 1991, I caused a computer database search to be made and it revealed the serial number of the applicant's corresponding United States patent 5,004,415.  I then requested an associate in Washington to forward to me a copy of the file history of Braas' United States patent.  On November 18, 1991 I received the file history and shortly afterwards reviewed it.  Now produced and shown to me marked "GCP-2" is a copy of United States Patent No. 5,004,415.  Now produced and shown to me marked "GCP-3" is a copy of the file history of United States patent No. 5,004,415.

10. It is noted that Braas' corresponding patent issued on April 2, 1991 which is much later than the date upon which the evidence-in-reply was completed.  Thus, it would not have been possible to obtain the file history until well after the evidence in the opposition had been completed.  Moreover, it is not really possible to obtain any information at all regarding a pending United States application until the patent has issued.  Thus, it is not usually possible to obtain even the serial number of a United States application in order to monitor its progress.  Accordingly, there would have not been any practical way to monitor the progress of Braas' United States application other than by carrying out a multiplicity of searches over a protracted period, which in the present instance was nearly 6 years from the priority date claimed to the date of issue of the patent.  That procedure would have been very cumbersome, time consuming and expensive.

11. In November 1991, in the course of reviewing Braas' United States patent and comparing its claims to those of the application under opposition, I noted that the process claims had been deleted and that the remaining apparatus claims in the patent were limited to a "two stage apparatus" that is to say where the apparatus includes a cutting knife which carries out a precompacting step and in addition thereto an indentation tool to compact the front edge portion of the tile over the entire cross-section of the tile.  Thus, claim 1 of the United States patent is significantly more limited when compared to claim 11 of the application herein.  More specifically, claim 11 of the application is not limited to pre-compaction.

12. In the course of reviewing the Braas' United States patent in November, 1991, I also noted that some of the prior art which was cited in connection with the corresponding United States application would in all probability be available for citation against the application herein, although at the relevant time I had not made enquiries as to the dates of availability of the various documents.  I knew, however, from inspection of the serial numbers and dates that many of them would have been available for citation.

13. Shortly after I had completed my review of the file history of Braas' United States patent, I advised Mr. Crighton that there was a substantial likelihood that the prior art which had led to the limitation of the claims of the United States patent would, if introduced into the opposition herein, would have a similar effect.  It was accordingly agreed that an application should be made for special leave to adduce further evidence and an application was so made on November 27, 1991.

14. In early February 1992, Mr. Crighton advised me that his enquiries regarding the Swedish prior art had proven fruitless because he was unable to show that there was any publication in Australia of the prior art material in question.  However, he further advised me that his enquiries had led Mr. Crighton to become aware of other instances of prior user in Australia which are directly relevant to the opposition herein.  More particularly he became aware of hand made tiles with a rounded nose which showed evidence of compaction at the rounded nose.  His enquiries revealed that those tiles were made at the Tighes Hill Tile Works in the 1950's.  His description of those tiles is set out in his declaration made on February 7, 1992.  I advised Mr. Crighton that although the tiles in question were individually made rather than being made in a continuous process, they were nevertheless relevant as prior art because they could be used to show that tiles made pursuant to the process and apparatus of Braas' application were generally known in Australia for many years and further that this example of prior user could be used to support arguments that the claims of Braas' application were invalid on the basis of lack of novelty and obviousness."

I allowed Mr Turner 14 days following the hearing within which to respond in writing to Mr Pryor's second declaration.

SUBMISSIONS

There are a number of factors which must be considered when assessing an application for special leave.  These were ably and succinctly put to me at the hearing by Mr Caine and Mr Turner.  I will now consider the present application against each of these factors in turn.

DECISION

The cases on applications for leave to adduce further evidence establish that there are three matters to be considered in deciding whether leave should be granted.  These are:

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

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

(3)The evidence must be such as is presumably to be believed, i.e. it must be apparently credible, though not necessarily incontravertible.

See Simac SpA Macchine Alimentari v Semak Electrics Pty Ltd (1985) 5 IPR 281, Micronair (Aerial) Limited v Waikerie Co-operative Producers Ltd (1986) AIPC 90-325, and Peuren Agencies Pty Ltd v Anthony Michael Barker (1984) APOR 23.

In considering the first of these matters, I will for convenience group the further evidence sought to be adduced as follows: evidence to establish the relevance of the material cited against Braas' corresponding United States patent no. 5004415 to the claims of application 563861, and evidence to establish prior user.  This latter evidence would comprise a declaration by Mr Crighton and accompanying exhibits.

US 5004415 issued on 2 April 1991 which is well after Humes had completed its evidence in support and reply.  However it was not until almost 7 months following the date of issue that Humes decided to investigate whether Braas' corresponding US application had proceeded to grant and, following this, to obtain and review its file history.  I also note from Mr Pryor's declarations that this decision was not made  until approximately 1 month prior to the likely date of the re-scheduled hearing of the opposition.  Furthermore, no evidence has been put before me to suggest that Humes had at any stage monitored the progress of Braas' US application despite its knowledge of that application.  In my view this is not justified by Mr Pryor's arguments concerning the "cumbersome, time-consuming and expensive" nature of having to monitor the progress of the US application since patent watching is a commonly adopted procedure, and Humes clearly could not have forecast the lengthy delay which ultimately occurred between filing and grant.In any event the  material cited against the Braas US application issued as early as 1914, with the most recent having issued in 1987, and it therefore seems to me that this material could have been uncovered by a reasonably diligent search prior to the completion of Humes' supporting evidence.  On the basis of the foregoing I must agree with Mr Turner's submission that the failure to locate the US material earlier reflects on the diligence displayed by Humes.

Perhaps of even greater significance to this matter is the sudden emergence of Mr Crighton's evidence.  Hume's evidence in support and reply was primarily based upon evidence given by Thomas William  Whitelaw.  In his declaration dated 8 December 1988, Mr Whitelaw states that in 1976 he established Globe Roof Tile Machines Pty Ltd to take over the design and manufacture of tile making machines which had formerly been conducted by Whitelaw Roofing Tiles Pty Ltd, also established by Mr Whitelaw.  Mr Whitelaw further states that his interest in both companies was bought by Humes.  He worked as a consultant to Humes for a short period, but from 1980 onwards has continued to work on his own account.

According to Mr Pryor, the present special leave application arose from discussions held with Mr Crighton.  However I must say that Humes has been less than forthcoming about Mr Crighton's involvement in these proceedings.  Firstly there has been no explanation of why Humes' evidence in the opposition was reviewed in preparation for the re-scheduled hearing in consultation with Mr Crighton and not Mr Whitelaw.   After all, Hume's opposition has to date rested largely on Mr Whitelaw's evidence and I am led to believe from Mr Pryor's evidence that Mr Crighton was not aware of the substance of Mr Whitelaw's evidence and thus had not assisted with its compilation. 

Secondly Mr Crighton is the Managing Director of Globe Roof Tile Machines Pty Ltd which, as I have indicated above, was established by Mr Whitelaw.  In my view this raises the question of why Mr Crighton's advice could not have been sought at an earlier stage in proceedings or why Mr Crighton's evidence concerning prior user is thought more reliable than that of Mr Whitelaw's.  And finally Mr Crighton is also the National Production Manager of Pioneer Roof Tiles Pty Ltd.  However it is not clear to me why this company is assisting in the opposition as stated by Mr Pryor since prima facie there is no relationship between Pioneer and Humes.

In considering this matter, I have not overlooked the fact that once the decision to adduce further evidence was made, steps were immediately taken to make application for special leave and to obtain the evidence.  However,  although I am unable to conclude that the further evidence is evidence which in total would have been available before the close of evidence in support or reply, Humes has not demonstrated to my satisfaction that the evidence could not have been obtained with reasonable diligence at an earlier stage.

As to the second factor, I consider that the evidence sought to be adduced prima facie is relevant to the opposition.  Although I cannot pre-judge the issues to be argued at the opposition hearing, I accept that the evidence concerns material which is pertinent to the question of whether the claimed invention is anticipated.  In this regard I note that Mr Crighton's fresh evidence  relates to alleged instances of prior user, a ground of opposition already pursued by Humes, and that the claims of Braas' corresponding US application have been subject to significant limitation in the light of the material cited against them.  While I agree with Mr Turner that such restriction of the US claims is non-binding on the fate of the claims of application 563861 under Australian law, this does not of itself mean that the US cited art can be dismissed as being totally irrelevant to the claimed invention.

As to the third factor, I can see no justification for rejecting the application on the ground that the further evidence is neither credible nor believable.  Mr Turner questioned the merit or admissibility of this evidence, but these are issues to be determined at the opposition hearing.

Mr Caine submitted that while the three factors quoted above should be taken as the general guidelines for assessing an application for special leave, they are not exhaustive of the factors which need to be considered.  I agree with Mr Caine.  As indicated in the Peuren v Barker case (see also Canadian Industries Ltd v Australian Paper Manufacturers Ltd (1981) 50 AOJP 4565, and Sue v Carpenter 19 IPR 187), the public interest should also be considered. This involves balancing the desirability of having as much relevant evidence as possible available for consideration at the opposition hearing, so as to minimise the likelihood of an invalid patent being granted, against the possible inconvenience or injustice to the applicant caused by undue delays in proceedings.

In the present case I have already indicated above that the evidence sought to be adduced is likely to contribute to the opposition, and is apparently credible.  Secondly I consider that allowance of the special leave application will not cause any unnecessary protraction of the opposition since I understand that preparation of the evidence is well under way.  Furthermore it is pertinent to note that there has already been some considerable delay in getting the opposition to hearing, and it seems to me that Braas must itself share a major part of the blame for this delay.  As a consequence I do not think that Braas has any substantial ground for complaint that allowance of the application will cause undue delay.

Thirdly I do not consider that Braas would be prejudiced if the application was allowed.  The evidence sought to be adduced comprises material which corrects apparent inaccuracies in Humes' original evidence regarding alleged prior user, and therefore is not directed to a completely new ground of opposition, together with material which was cited against Braas' own US application and which as a consequence could hardly take Braas by surprise.  Furthermore, if special leave is granted, Braas will have the opportunity to reply under reg 59(6).

Finally Mr Turner submitted that the evidence sought to be adduced does not have the necessary "special characteristics" as discussed in The Dupps Company v Stord Bartz 18 IPR 499 and 19 IPR 17. I do not agree with this submission since the circumstances of the present application clearly differ from those in Dupps v Stord in which the further evidence merely duplicated evidence which would have been lodged under reg 55 had an application for an extension of time to lodge that evidence not been previously refused.  Furthermore the Commissioner's delegate decided in Canadian Industries v APM that any "special characteristics" must be related to the value of the evidence in affecting the determination of the opposition.  I have already found in Humes' favour on this issue.

CONCLUSION

Taking account of all the information placed before me on this matter, and balancing the several considerations to which I have referred, I consider that a case has been made out justifying the allowance of the application for special leave.  In my view, any lack of reasonable diligence by Humes is outweighed by the likely benefit of a more correct and just determination of the opposition if the further evidence was introduced.  Accordingly I allow the reg 59 application.  The procedure to be followed is that provided for under reg 60.

COSTS

In an action of this nature costs normally follow the event, unless the decision is based on information revealed only at the hearing.  In the present case my decision to allow the special leave application is substantially based on material provided by Humes at the hearing which elaborated on the background to the application, the nature of the evidence sought to be adduced and its likely benefit to the opposition.  I therefore make no award of costs.

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson

Sydney

Patent attorneys for the opponent   :  Davies Collison Cave

Melbourne