CATERPILLAR INC v KOZO Miyake

[1995] APO 70

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 651768 in the name of CATERPILLAR INC

Title:    Integrated Vehicle Positioning and Navigation System, Apparatus and Method

Action:    Opposition under section 59 (Patents Act 1990) by KOZO MIYAKE. Requests to amend statement of grounds and particulars (regulation 5.9(1)).

Decision:    Issued            .

Abstract           :    One request allowed, one refused due to
  undue prejudice. Time for serving
  evidence-in-answer.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 651768 by CATERPILLAR INC and opposition thereto by KOZO MIYAKE. Requests to amend the statement of grounds and particulars.

background

Patent application 651768 was filed on 2 September 1993 by CATERPILLAR INC (the applicant), as a divisional of 642638.  It was advertised accepted on 28 July 1994.

On 27 October 1994 a notice of opposition was filed by KOZO MIYAKE (the opponent), followed on 27 January 1995 by a statement of grounds and particulars (the statement).

Service of the evidence-in-support was completed on 27 April 1995.  A first request to amend the statement was lodged on 20 April 1995, followed by a second request to amend on 27 April 1995.  The applicant objected to both of these requests on 8 May 1995; the new particulars were included in the evidence-in-support.

The correspondence file shows that there has been some consideration of when the time for serving evidence-in-answer should commence, in view of these proceedings.  The Deputy Commissioner proposed to issue a direction that this should be on the date of this decision, and the opponent indicated that it would not object to such a direction.  However it appears that this direction has not actually been made, and I will deal with it here.

A hearing was set down for 15 September 1995 in Canberra, with both parties choosing to appear by telephone.  Mr Michael Martin, patent attorney of Chrysiliou Moore Martin, appeared for the opponent, and Mr Douglas Carter, patent attorney of Carter Smith & Beadle, appeared for the applicant.

First amended statement

The amendment requested takes the following form, with change emphasised.

"Ground No.1

The invention as claimed in any one of claims 1 to 14 is not a patentable invention because it was published in the patent area before the relevant priority date of each claim.

Particulars for Ground No.1

The following documents were published in the patent area before the relevant priority date of each claim.

1.1).....
.........
1.6).....

1.7) Proceedings IEEE/RSJ International Workshop on Intelligent Robots and Systems '89 (IROS'89) 4-6 September 1989 Tsukuba, Japan.  This includes an article entitled "Position Based Path Tracking for Wheeled Mobile Robots". 
Authors: Sanjiv Jeff Singh and Dong Hun Shin
pages 386 to 391."

Second amended statement

As amended by the second request, the statement would read as above, with the addition of the following shown emphasised.

"Ground No.1
........
Particulars for Ground No.1
.........
1.1).....
.........
1.7).....

1.8 Dickmans, E.D. "Dynamic Computer Vision for Mobile Robot Control" Proceedings of the International Symposium & Exposition on Robots, Sydney, Australia, November 6-10, 1988 Pages 314 to 327.

1.9 Murata, S. & Hirose, T. "Onboard Locating System of Autonomous Vehicle" IEEE/RSJ International Workshop on Intelligent Robots and Systems '89; September 4-6, 1989, Tsukaba, Japan Pages 228 to 234.

1.10 Nelson, W. 1989 "Continuous-Curvature Paths for Autonomous Vehicles" Proceedings 1989 IEEE International Conference on Robotics and Automation, May 14-19, 1989, Scottsdale, Arizona Pages 1260 to 1264."

SUBMISSIONS

Mr Martin for the opponent made the following main points in support of the requests to amend.

* The most relevant decided cases are Diamond Scientific Company v CSL Ltd (1992) AIPC 90-927, Sumitomo Electric Industries v BICC Plc (1993) AIPC 90-988, and Abundant Lawn Grass Industries v Crangrove (1993) AIPC 90-973. He submitted that the present case satisfies the requirements set out in these decisions.

* The opponent's declarant Dr McKerrow was engaged to give an opinion on the invention in view of the common general knowledge and the prior art as listed in the original statement.  In the course of doing this, he also reviewed various documents available to or held by him, in that art.  This would be natural to do, it was said, because the relevant date was December 1989, nearly six years earlier.  He was not instructed to carry out any further searches for prior art.  Consequently the new document arose incidental to the preparation of the opponent's case.

* There was no undue delay in filing either of the requests to amend, in both cases only a matter of days after the opponent's attorney became aware of them, and within the time for serving the evidence-in-support.

* There was no protraction in the preparation of the opponent's case, as the evidence-in-support was lodged in time.

* There has also been no protraction in the preparation of the applicant's case, since on 27 July 1995, several months after the amendments were requested, the applicant stated, in its request for an extension of time in which to serve its evidence-in-
 answer, that the services of an expert in the art had not yet been obtained.  Thus even in the absence of the requests to amend, the applicant was not in a position to proceed.

* While the case to be answered will be changed by the amendments, if allowed, it will not be substantially changed.  In Abundant Lawn Grass (supra) it was held that the addition of a new particular, which was in the same general field as the other particulars, does not make a substantial change in the case.

In this case, five of the six original particulars are concerned with aspects of the navigation of autonomous vehicles, as are all the new particulars.  Consequently there is no substantial change in the case, and there is at least prima facie no undue prejudice.

* In any case, the finding in Diamond Scientific (supra) that prima facie undue prejudice follows from an objection to the amendment, is questionable.  The applicant could be motivated to object for a number of reasons, eg in order to obtain extra time in which to prepare its evidence-in-answer.

* There is a public interest in admitting new material so that it can be considered on its merits.

* The first-requested new particular is a paper authored by two of the inventors of the present invention.  It is a reasonable assumption, not expressly denied, that the applicant knew of it much earlier than these proceedings.

* Each of the requests to amend should be considered on their own.

Mr Carter for the applicant made the following main points.     

* In Abundant Lawn Grass the delegate was considering a single extra document.  In the present case the opponent wishes to add a total of four extra documents  to the original six.  This is clearly a substantial change in the case to be answered.

* It is not clear from Dr McKerrow's declaration exactly how or when the new evidence was discovered.  He says only that he was not instructed to carry out any further searches.

* The time for carrying out searches is the time preceding the filing of the original statement.  In the present case the opponent has been aware of the application, and its parent and other divisionals, for some time, as is shown by section 27 notices in respect of some of them.

* If new prior comes to notice during preparation of evidence, then this indicates the original search was inefficient and/or insufficient.  The evidence does not show why the new evidence was not found earlier.

* Whether or not there has been an undue delay relates not only to the time at which amendment is requested, but also to the time of filing the original statement.

* There is a protraction in the preparation of the case as a result of the amendments requested, as the applicant does not know the case it has to answer.

* It was submitted that the evidence failed to show  that two of the new documents (1.7 and 1.9) were published in the relevant sense, and if they were, the actual date of publication was not clear.  Also, all of the new documents were inadequately particularised, in that relevant parts of the documents and the relevant claims were not identified.  Either or both of these being the case, it was said, would make a particular inadequate for its purpose, and to allow it would be unduly prejudicial.

* As for the fact that two of the present inventors are authors  of one of the new particulars, there is no evidence at all that the applicant had prior knowledge of the paper.

* Merely reading the titles of all the particulars, as the attorney for the opponent did, does not establish that the new particulars are in the same general field as the original - Abundant Lawn Grass.

* As far as the public interest is concerned, the relevant consideration in deciding whether or not a new document should be admitted is how and when that document came to notice, not the mere fact of its existence.

* It was put that as there were two requests to amend but only a single hearing, it would be most appropriate for me to base my decision on the second one, which includes the first, ie a request to allow four extra particulars.  It was also said that if I decided otherwise, it would be quite wrong to consider a succession of amendments, and allow each one in turn, on the basis that each made only a small change in the case to be answered.

DECISION

The relevant parts of the applicable regulation read as follows.

"5.9(1) Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:

(a) If the Commissioner reasonably believes that an amendment of a statement referred to in subregulation 5.4(1) ("filing of a statement") corrects an error or omission by the opponent or by his or her agent - may amend the grounds of opposition set out in the statement; or
......
(c) must amend particulars relating to a ground set out in a statement that is served and filed under subregulation 5.4(1).

(2) The Commissioner must not allow an amendment requested under subregulation (1), if:
......
(e) he or she reasonably believes that a person will be unduly prejudiced by the amendment."

The relevant part of regulation 5.4(1) reads as follows.

"5.4(1) An opponent must:

(a) within 3 months of filing the notice of opposition serve on the applicant a copy of a statement that sets out:

(i) the grounds of opposition; and

(ii) the particulars relating to each ground;"

That is, I must allow the amendments to the particulars unless I reasonably believe that a person, which of course includes the applicant, will be unduly prejudiced by the amendment.

In Diamond Scientific the Commissioner's delegate there decided that amendment of particulars would unduly prejudice a person if:

(i) the amendment is disadvantageous to the person; and

(ii) the circumstances surrounding the amendment cause the degree of that detriment to be unwarranted, excessive, improper, inappropriate, or unjustified.

The delegate also held that extra particulars that arise incidental to the preparation of the case will not prima facie give rise to the applicant being unduly prejudiced if the amendments:

(i) do not result in any protraction of the preparation of the case; and

(ii) are included by way of amendment of the statement of grounds and particulars at the earliest reasonable opportunity; and

(iii) do not substantially change the case the applicant has to answer in opposition.

In Diamond Scientific (and some others) the new material was in fact found "incidental to the preparation of the case", however I do not consider that this necessarily excludes new material found in some other way.  The important thing, as can be seen from reading that decision, is that new material not be found as a result of the opponent carrying out further searches.

In the present case I am inclined to agree with Mr Carter that it is not entirely clear how the new documents were found.  In his declaration of 27 April 1995 Dr McKerrow says:

"3. During my review of the documents referred to in clause 1 above, I also reviewed various documents available to or held by myself, which are discussed in this declaration. I had not been instructed by Chrysiliou Moore Chrysiliou to conduct a search for relevant prior art. These were discovered as a result of my review of the patent specification and compilation of material to establish the state of the common general knowledge as at 11 December 1989."

This seems to allow the possibility that Dr McKerrow took it upon himself to search for further or better prior art, and though not instructed to do this, he would have been acting in the opponent's interest, and the opponent now seeks to have the extra prior art found to be admitted.  Perhaps then it would be appropriate in these circumstances to attribute the further search, if there was one, to the opponent.

On another view, if Dr McKerrow did do another search, but not on the opponent's instructions, then this could be seen as a matter which came about "incidental" to the opponent's preparation of its case.  In any event, the evidence does not show that Dr McKerrow did actually conduct a further search.

All things considered, I will regard the extra documents as falling within the embrace of Diamond Scientific, and apply the tests set out in that decision.

Is there any protraction in the preparation of the case?

I will take "the case" to include the opponent's case in support of the opposition and the applicant's case in answer.  The amendments were requested during the normal time allowed for filing evidence-in-support, and consequently there was no protraction at all in the preparation of the opponent's case.

The initial period for filing the evidence-in-answer expired on 27 July 1995, and on that date the applicant requested an extension of another three months.  In its supporting statement reference is made to the complexity of the invention, the quantity of documents cited, and that to answer the evidence,    "further time is necessary to locate an appropriate expert with the relevant expertise."

This seems to be saying that the applicant was not yet in a position to respond to even the original documents, three months after their filing.  It is difficult to see then how it can be said that the preparation of the applicant's case would be protracted by allowing the extra particulars, except of course for whatever time might be needed to respond to them, if they were allowed.  Obviously there will always be some delay in the proceedings if extra documents need to be answered, but I do not consider that this a protraction in the preparation of the case, in the sense considered in Diamond Scientific.  I conclude that there is none.

Were the amendments requested at the earliest reasonable opportunity?

From the file material it seems that the requests to amend were made within several days of the opponent's attorney becoming aware of the new material and receiving the necessary instructions, and I do not consider that there was any unreasonable delay at that stage.  It is less clear exactly when Dr Mckerrow himself became aware of the new material, but it appears from the correspondence file to have been some time in April 1995 in both instances, ie the same month in which the requests to amend were made.  I do not consider there to have been any unreasonable delay here either.

I conclude that there was no unreasonable delay in requesting either amendment.

Is there a substantial change in the case to be answered?

The specification includes 118 pages of description, 85 sheets of drawings, and 14 claims.  The application is a divisional and it is likely that only part of the whole description goes to what is presently claimed.  Though the claims are not long, the underlying principles of the invention are quite complex.

The invention is a navigation system for an autonomous (ie self-controlled) surface based vehicle.  The relevant original particulars consist of three technical papers and three JP patent specifications, with translations.  One of the technical papers (1.3) appears to be markedly less relevant than the other particulars.

The extra particulars are four technical papers, and I am satisfied that they are all in the same general field as the invention.  Consequently the number of clearly relevant technical papers would increase from two to six.  Though not particularly long, all the papers are characterised by dense and complex mathematics, which in my opinion makes their exact relevance to the present invention difficult to determine.  Also, as the applicant complains, they are devoid of any identification of the relevant parts. While in some circumstances it might then be appropriate to invite the opponent to file an amended statement which does identify the relevant parts, I do not consider that to be the case here, as it would not be a conclusive factor in my decision. 

Where changes to the original particulars are as extensive as they are here then I think that I must find that there is a substantial change in the case to be answered.  This is not the same as in Abundant Lawn Grass, where there was only a single extra particular, it was a patent specification rather than an academic paper, with the practical differences which that implies, and that invention did not have the technical difficulties of the present.

However, it is a circumstance of the present case that there are two requests for amendment, each to the original statement, the second including the first.  The first adds a single particular, the second adds that one plus three more.  Brief submissions were made as to how I should deal with this.  For perhaps fairly obvious reasons, the applicant preferred that I should consider the second one only, while the opponent preferred that I consider each separately.

I am inclined to think that it is most appropriate, and most likely to meet the legitimate entitlements of the parties, and the public, if they are dealt with separately, that is this hearing is in effect in respect of two separate actions.  Of course in each case I am dealing with a whole amended statement, and this should not be a mechanism for overcoming undue prejudice by a succession of small changes.

First amended statement

This adds a single technical paper, and there was a suggestion that as the authors are among the several inventors of the invention, then the applicant already knew of it, and could not be unduly prejudiced by its admission.  The evidence does not establish this one way or the other, though I think it is perhaps not unlikely.

There was also some question about whether this paper was published in the proper sense, at least in Australia, but this is an application for a standard patent under the Patents Act 1990, and I doubt that there is an issue here. If there is, I consider that it is best dealt with at the substantive opposition.

Guided by Abundant Lawn Grass, I consider that on balance no substantial change in the case to be answered will be caused by allowing this single extra particular, which is in the same general field as the invention.  I think it must be adequately particularised for its purpose, as the applicant made no request for directions to provide further and better particulars in respect of exactly similar particulars in the original statement. Following Diamond Scientific, there is therefore prima facie no undue prejudice.  Further, I note that the request has been made at an early stage in the opposition process, and I do not consider that the applicant has shown that it is in fact unduly prejudiced; I will allow the amendment.

Second amended statement

As I have said in the preceding, in my opinion the four extra documents which would be added clearly cause a substantial change in the case.  Again following Diamond Scientific, the applicant is then prima facie unduly prejudiced, and the onus is on the opponent to rebut.  In my view the opponent has failed to do this.  Perhaps the most significant factor in the opponent's favour is the early stage of proceedings at which amendment has been requested, but I consider that the extent and nature of the extra particulars, in relation to the original particulars, outweighs this.

I conclude that the applicant would be unduly prejudiced by allowing the second amendment, and I will refuse it.

Conclusion

I have decided that the amendment to the statement dated 19 April 1995 would not unduly prejudice the applicant, and I allow it.  I have also decided that the amendment dated 27 April 1995 would unduly prejudice the applicant, and I refuse it.

I direct that the time for serving evidence-in-answer commence on the date of this decision and run for three months.

Costs

Costs in these proceedings normally follow the event.  As I have said, this hearing was in respect of two actions, and as each party was successful in one and unsuccessful in another, I will make no award of costs.

RG Tolhurst
Delegate of the Commissioner of Patents

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

Patent attorneys for the opponent   :  Chrysiliou Moore Martin, Sydney