Crosskeys Systems Corporation and Newbridge Networks Corporation v Astracon (Australia) Pty Ltd

[2000] APO 8

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 703645 in the name of CROSSKEYS SYSTEMS CORPORATION and NEWBRIDGE NETWORKS CORPORATION.

Title:          Integrated management of multiple networks with different topologies.

Action:          Request under Regulation 5.5 by CROSSKEYS SYSTEMS CORPORATION and NEWBRIDGE NETWORKS CORPORATION for dismissal of an opposition under Section 59 of the Patents Act by ASTRACON (AUSTRALIA) PTY LTD.

Decision:          Issued  .

Abstract:None of the grounds of opposition in the opponent's statement of grounds and particulars were found to be untenable.  The ground of opposition relating to lack of novelty and inventive step involved a large number of cited documents (about forty).  Issues concerning the provision of adequate particulars for such large numbers of documents were taken into account.  Nonetheless this ground was adequately supported by the present particulars.

All of the grounds were found to have adequate support in the corresponding particulars against each ground.

There was no basis to dismiss the opposition as a whole, or dismiss any ground of opposition, or direct the opponent to provide further and better particulars against any ground of opposition.

The applicants' request to dismiss the opposition failed on all counts.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application 703645 by CROSSKEYS SYSTEMS CORPORATION and NEWBRIDGE NETWORKS CORPORATION, and a request by the applicants for dismissal under Regulation 5.5 of an opposition under Section 59 by ASTRACON (AUSTRALIA) PTY LTD.

BACKGROUND

CrossKeys Systems Corporation and Newbridge Networks Corporation ("CrossKeys") filed patent application 703645 as an international application on 19 September 1995.  The application was advertised as accepted on 25 March 1999.

Astracon (Australia) Pty Ltd ("Astracon") filed a notice of opposition on 25 June 1999 to the grant of a patent on the application.  Astracon subsequently served a statement of grounds and particulars on 24 September 1999. 

On 25 October 1999 CrossKeys requested dismissal of the opposition.

A hearing took place in Canberra on 13 December 1999.  CrossKeys advised they did not wish to appear at the hearing.  They relied solely on written submissions filed prior to the hearing by their patent attorneys, Griffith Hack.  Mr Dennis Barr, assisted by Mr Mark Smith, both of Fisher Adams Kelly, represented Astracon at the hearing by telephone.

APPLICABLE LAW

The reasons for dismissing an opposition must satisfy a stringent test.  General Steel Industries Inc v Commissioner of Railways (NSW), (1964) 112 CLR 125, is a recognised authority for dismissal actions. That decision variously describes a test for summary dismissal as "so obviously untenable that it cannot possibly succeed", "manifestly groundless", "so manifestly faulty that it does not admit of argument".

The Patent Office has followed this practice.  An opposition will only be dismissed if it is clear that the opposition could not possibly succeed.  Furthermore the onus falls on the applicant to show the opposition is clearly untenable.  This practice has support from the Federal Court decision, Stack v Commissioner of Patents, 43 IPR 663.

An assessment of whether an opposition should be dismissed is normally based on an opponent's statement of grounds and particulars.  The function of this statement is to give the applicant fair notice of the case to be answered.  The Mobay Corporation v The Dow Chemical Company decision, 24 IPR 379 at 390, sets out certain criteria for the statement of particulars to achieve this objective. The criteria are as follows:

"(i) the particulars must state all material facts necessary for the ground of opposition;
(ii) the particulars must only state material facts;
(iii) the evidence by which the facts are to be proved must not be included;
(iv) matters of law should not be included; and
(v) the particulars are to be in summary form."

The E I DuPont de Nemours & Co v DowElanco decision, 29 IPR 131 at 138, gives some guidance on the type of information that would constitute material facts to support certain grounds of opposition. While this is useful, one needs to take care not to interpret this guidance as prescriptive. What constitutes adequate particulars will depend very much on the circumstances of each particular case (Alvern Norway A/S v Trans Global Concepts Pty Ltd, 38 IPR 158 at 160).

An opposition can be dismissed in whole or in part.  If the statement of particulars does not have any material facts to support a ground of opposition, the ground can be dismissed (L'Air Liquide, Societe Anonyme Pour L'Etude Et L'Exploitation Des Procedes Georges Claude v The Commonwealth Industrial Gases Ltd, 24 IPR 77). In such a case the fault cannot be remedied by the provision of further and better particulars (Mobay (supra) 24 IPR 379 at 394, and CSIRO v CEM Corporation, 29 IPR 72 at 77).

On the other hand a ground of opposition will not be dismissed merely because some of the particulars are ineffective (Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd, 24 IPR 368 at 377).

REQUEST FOR DISMISSAL

In the letter accompanying the request for dismissal, CrossKeys request dismissal of ground 1 (lack of novelty and inventive step) of Astracon's statement of grounds and particulars on the basis that this ground is unsubstantiated and entirely unsupported by the particulars.  CrossKeys further assert it is Patent Office practice to require a description of the relevance of each cited document together with page and line references to relevant specific parts of the document where the number of cited documents exceeds ten in respect to any one ground.  CrossKeys note the statement of grounds and particulars is deficient in this regard.

In respect to the other grounds set forth in the statement (insufficiency of the description of the invention, and lack of clarity, succinctness and fair basis of the claims), CrossKeys assert these grounds have insufficient support in their particulars.

Consequently CrossKeys assert the whole opposition should be dismissed.

DECISION

Mr Barr submitted an opposition can only be dismissed in very clear cases.  He also said it is not appropriate to dismiss an opposition where serious questions of law are involved.  Mr Barr said a final conclusion on such questions cannot be arrived at without the benefit of evidence.  In the light of the substantial evidence foreshadowed by the particulars of the present opposition, Mr Barr submitted it could not be said at this stage of proceedings that it is clear there is no real question of law to be considered.  Consequently Mr Barr asserted the opposition should not be dismissed.

In respect to the first ground of opposition, Mr Barr also took issue with CrossKeys' view that the absence of complete details of the relevance of cited documents, where there are more than ten documents, may be a trigger for shutting out a serious opposition.  He said the courts have consistently criticised the application of arbitrary rules without full and proper regard to all the surrounding circumstances.

In general I accept the principles outlined by Mr Barr.

The written submissions from CrossKeys cover a number of points in finer detail.  The first is that some of the documents recited in the statement of grounds and particulars, under ground 1, have already been considered during patent examination.  CrossKeys note their patent application proceeded to acceptance without objections being raised by the patent examiner in respect to these documents.  Consequently CrossKeys suggest these documents should not be part of the present opposition.  CrossKeys also note these documents originate from a Section 27(1) notice filed against the patent application by Astracon during examination. 

In assessing the relevance of earlier documents, the examiner does not have the benefit of evidence or comments from those people working in the field nor the benefit of knowing the precise level of common general knowledge in the field and how people in the field would apply that knowledge.  Opponents to grants of patents are able to draw on far greater resources than examiners in assessing the relevance of earlier documents.  Consequently CrossKeys' argument is untenable.

In any case the Borden, Inc v Elkem A/S decision, (1992) AIPC 90-893, states that the fact that documents have already been considered by the examiner during the examination procedure carries no weight whatsoever in an action for dismissal.

CrossKeys' second main submission is that ground 1 of the opposition should be dismissed because there is insufficient detail in the statement of particulars to identify what information in each cited document is relied upon to support this ground.  CrossKeys relied on the ICI v Irenco Inc decision, 26 IPR 154, which suggests this level of detail is required where the number of documents cited against a ground of opposition exceeds seven to ten documents. The DuPont (supra) decision suggests the required level of detail for documents is the relevance of the reference together with page and line references to direct the reader to the specific part of the document that is to be relied on. 

In the present case there are approximately forty documents against ground 1.  Mr Barr noted most of the particulars mention the relevant information, and page and line references out of the cited documents.  He said the particulars that do not mention this detail are in respect to technical documents that are of short length only and present an overview of the common general knowledge in the field.  Mr Barr submitted the particulars have gone as far as the ICI (supra) and DuPont (supra) decisions require.

In scrutinising the particulars I note Astracon have provided details in accordance with these two decisions for approximately one quarter of the cited documents.  The majority of the particulars do not have such level of detail.  They simply quote the authors, titles and publication details of the documents.  On the other hand these documents are technical documents of relatively short length.  In almost all instances the number of pages quoted for each document is less than fifteen.  Many are of significantly less length than that number. 

In any case the numerical limits and level of detail mentioned in the ICI (supra) and DuPont (supra) decisions should not be seen as prescriptive.  The Alvern (supra) case says these decisions are instructive but should not be taken to set out prescriptive requirements.  What constitutes adequate particulars will depend on the circumstances surrounding each particular case.  In the Dominion Mining Ltd v Technological Resources Pty Ltd case, 31 IPR 608 at 616, the hearing officer comments, in reference to the ICI (supra) and DuPont (supra) decisions, that:

"I do not believe that we can set down any rigid numerical limit.  Each case must be treated on its merits taking all relevant factors into account.  The overriding consideration must be whether the applicant can reasonably be expected to understand the case presented."

In the Dominion (supra) decision the applicant had to contend with sixteen documents.  The hearing officer also said (again on page 616) that it would be only in very unusual circumstances that citing more than twenty documents could be adequate without further particularisation.

The present case involves approximately forty documents.  Nonetheless most of these documents are of short length.  The inclusion of further and better particulars to give more specific explanation of the information being relied upon in the documents, and appropriate page and line references, would add little to the information already provided by Astracon to outline the case for CrossKeys to answer.

I am satisfied Astracon have adequately set out the case for CrossKeys to answer.

The remaining particulars under ground 1 relate to prior use, common general knowledge and inventive step.  CrossKeys did not specifically address these particulars.  In my perusal of them I find they briefly describe relevant material facts.  I consider these particulars sufficiently enable CrossKeys to understand the case they have to answer on these aspects of patent law.

I find CrossKeys' request to dismiss ground 1 is insufficiently supported.  I also find there is no case requiring Astracon to provide further and better particulars under this ground.

CrossKeys did not strongly pursue their argument against the remaining grounds of opposition.  I have canvassed the particulars against these grounds.  I conclude these particulars contain sufficient explanation of the alleged faults in respect to the description and claims.  There is no case to dismiss these grounds or direct Astracon to provide further and better particulars under these grounds.

CONCLUSION

CrossKeys' request for dismissal of the opposition fails on all counts.  The opposition proceedings stand.  In accordance with sub-regulation 5.8(1)(a)(iii), the time for Astracon to serve evidence in support of their opposition expires three (3) months from the date of this decision.

COSTS

The applicants have been wholly unsuccessful in their request for dismissal of the opposition.  I award costs against CrossKeys Systems Corporation and Newbridge Networks Corporation.

M.G. Kraefft

Delegate of the Commissioner of Patents

Attorneys for the applicants  :  Griffith Hack, Sydney

Attorneys for the opponent   :  Fisher Adams Kelly, Brisbane