Cadbury Schweppes PLC v Wm. Wrigley Jr. Company - [2007] APO 19

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2003261521 in the name of Wm. Wrigley Jr. Company

Title: Confectionary Products Having Improved Shelf Life and Methods for Their Production

Action: Request of an extension of time to serve evidence in support of an opposition by Cadbury Schweppes PLC

Decision: Issued 14 June 2007.
Abstract

Extension of time allowed.
Delays leading to this and the previous four extensions have largely resulted from difficulties in locating a suitable declarant and completing their evidence.
The evidence expected to be obtained is likely to be highly relevant to the outcome of the substantive opposition, being related to novelty and inventive step considerations.
Cadbury have provided a reasonable explanation for the delay.
No award of costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2003261521 by Wm. Wrigley Jr. Company and an extension of time to serve evidence in support of an opposition by Cadbury Schweppes PLC

BACKGROUND

Patent application 2003261521 in the name of Wm. Wrigley Jr. Company (hereafter referred to as Wrigley) was filed on 6 November 2003 as a divisional of 65226/00. Following examination the application was advertised accepted on 15 December 2005. Cadbury Schweppes PLC (hereafter referred to as Cadbury) filed a notice of opposition under Section 59 of the Patents Act on 15 March 2006 and a Statement of Grounds and Particulars on 15 June 2006.

Evidence in support was originally due to be served by 15 September 2006. Four extensions of time have been approved, bringing this date to 15 April 2007. A further extension to 15 July 2007 has been opposed by Wrigley. On 16 April Cadbury filed part evidence in the form of a declaration by Janelle Borham together with 12 exhibits.

The matter was heard by telephone on 4 June 2007. Mr Andrew Lee and Dr John McCann, patent attorneys of Spruson & Ferguson, appeared for Wrigley. Mr Ben Fitzpatrick of counsel instructed by Miss Janelle Borham of Griffith Hack appeared for Cadbury.

The present application for extension of time

Cadbury have requested a three month extension of time for serving evidence in support from 15 April 2007 to 15 July 2007. The reasons for the extension are given in the declaration of Ms Borham dated 16 April 2007. The reasons relate to difficulties in locating a suitable declarant, and in completing their evidence. Shortly before the hearing a further declaration by Ms Borham dated 4 June 2007 was provided, which covered events between the earlier declaration and the hearing. It is appropriate to have regard to all of these facts in reaching a decision.
The relevant facts in these declarations are as follows:

§Cadbury had been collecting evidence and pursuing experts for what was originally ten oppositions. Most of these oppositions have been withdrawn – only three remain.

§Originally Cadbury had been pursuing experts residing in the USA. Four potential experts had been identified, three of whom were too busy working on other litigation and one of whom was busy moving house.

§On 5 January 2007 Ms Borham held a telephone conference with the Japanese-resident expert Rikiya Kuwahara in order to obtain information pertaining to the state of the art at the priority date before he was provided with a copy of the opposed specification. Mr Kuwahara is also providing evidence in two other oppositions by Cadbury.

§Further telephone conversations have been conducted with Mr Kuwahara. All evidence has been obtained on the first of the three opposed applications, and most of the evidence on the second application has been completed. The prior art relevant to the present opposition has now been passed to Mr Kuwahara. A telephone conference with Mr Kuwahara is set for 8 June 2007.

§An Australian expert (Mr Krnic) has been approached, and was interviewed on 20 April 2007. He has requested another person from his company (a fellow employee?) to locate information about products manufactured by his company before the priority date. A further meeting with Mr Krnic is scheduled for 12 June 2007.

§In view of time pressures on Mr Kuwahara, an expert in the USA has been located (Mr Kuncewitch). A meeting is planned for 19 June 2007.

DECISION

The present extension would bring the total extension of time to serve evidence in support to 10 months.
The law on extensions of time
The time for serving evidence can be extended under regulation 5.10(2):
(2)       The Commissioner may:
(a)       on the application of a party in the approved form; and
(b)       on such reasonable terms (if any) as the Commissioner specifies:
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5):
(5)       The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his own motion - ensures that the parties are notified of the proposed action; and
(c)       in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, and extension of time or the serving of evidence is appropriate in all the circumstances.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. These requirements have been met in the present case.
An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. These decisions establish that:
a)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)
b)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)
c)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 significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*         The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)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)
e)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)
Explanation of the delay
The main reason why evidence has not yet been served is delays in identifying experts and in finalising their evidence. Originally declarants in the United States were sought, but they were not proceeded with due to the pressures of other work. A declarant in Japan (Mr Kuwahara) was then identified. This declarant has been busy preparing evidence for other oppositions by Cadbury, so has been unable to complete a declaration for the present matter. More recently, a declarant in Australia (Mr Krnic) was identified but his declaration has not yet been completed. On the day of the hearing it was revealed that Cadbury have now located an expert in the United States (Mr Kuncewitch) and are seeking to obtain a declaration from him. These matters are more fully explained in the two Borham declarations.
It is apparent that there has been an unfortunate delay in settling on the declarants for this matter. This is somewhat surprising given that Cadbury have oppositions to related applications presently in train. However, this also seems to have been part of their problem. First the US experts and then the Japanese expert have been unable to deal with the present opposition due to the workload of other litigation. While delay is always regrettable, it is understandable in the circumstances. However, the declarants now appear to be able to focus on the present opposition.
Cadbury have indicated that the evidence of Mr Krnic should be completed within the extension that is presently sought. They have a high expectation of completing the evidence of Mr Kuwahara within the period of the extension, but are less certain of completing the evidence of Mr Kuncewitch. A significant amount of evidence should be able to be served before 15 July 2007.
I am satisfied that a reasonable explanation of the delay has been provided.
The public interest
The public interest in determining a serious opposition on its merits is assessed by considering the nature and significance of the evidence that will be served (Goninan at AIPC 39,438; IPR 225-6). In the present case, the evidence relates to the construction of prior art documents and establishing what was known in Australia. These matters are clearly of significance to the grounds of novelty and inventive step. Given that no expert evidence has yet been served, this evidence is likely to be significant to the opposition. I am satisfied that the public interest favours the grant of an extension of time.
The interests of Cadbury
To date, Cadbury have not served any evidence by experts. As a consequence, if the extension is not granted then Cadbury will be effectively shut out from arguing much of their case. Clearly Cadbury’s interests heavily favour the extension being granted.
The interests of Wrigleys and the Patent Office
Wrigleys have an interest in the opposition being determined quickly. Mr Lee questioned whether Cadbury were engaged in a serious opposition or were merely delaying the grant of a patent. A mere delaying tactic would be seriously prejudicial to Wrigley’s interests. The statement of grounds and particulars foreshadows a serious opposition. However, the shortage of evidence makes it difficult to confirm this. At this stage I am prepared to give Cadbury the benefit of the doubt on this point, but any further delay in serving evidence would raise serious questions.
The Patent Office has an interest in the orderly processing of oppositions.
The balance of considerations
Cadbury have provided a reasonable explanation for the delay. The public interest and the interest of Cadbury favour granting the extension. Wrigley’s interests are against the extension, and the interests of the Patent Office are a minor consideration. On balance, it is appropriate to grant the extension.
Conclusion
I grant the extension of time for serving evidence in support until 15 July 2007.
Costs
Costs normally follow the event. However, in this case, Cadbury were still introducing evidence to support the extension on the day of the hearing. This information was relevant to my decision, so it is appropriate to take this into account in deciding the award of costs. In the present case, it is appropriate to make no award of costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents
14 June 2007
Patent attorneys for the applicant : Spruson & Ferguson
Patent attorneys for the opponent : Griffith Hack