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

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Crosskeys Systems Corporation and Newbridge Networks Corporation v Astracon (Australia) Pty Ltd [2000] APO 8
Case: [2000] APO 8
Decision Date: 18 January 2000

CaseChat Overview and Summary

CrossKeys Systems Corporation and Newbridge Networks Corporation (CrossKeys) applied for the dismissal of an opposition by Astracon (Australia) Pty Ltd (Astracon) to the grant of a patent for their invention titled "Integrated management of multiple networks with different topologies." The dispute was heard by a delegate of the Commissioner of Patents, who was tasked with determining whether the opposition was untenable and should be dismissed in whole or in part. The key legal issues involved the sufficiency of the particulars provided by Astracon in support of their grounds of opposition, specifically regarding the novelty and inventive step of the invention. CrossKeys argued that the opposition was unsubstantiated, particularly in relation to the ground concerning lack of novelty and inventive step, due to the large number of cited documents and the lack of detailed particulars for each.

The delegate considered the relevant legal principles, including the stringent test for dismissing an opposition, which requires the opposition to be "so obviously untenable that it cannot possibly succeed." The delegate noted that the courts have discouraged the application of arbitrary rules without considering all circumstances. In assessing the adequacy of the particulars, the delegate relied on relevant case law, which indicates that the level of detail required depends on the specific case. The delegate found that Astracon had provided sufficient particulars to enable CrossKeys to understand the case against them, despite not meeting a strict numerical threshold. The delegate also found that the remaining grounds of opposition were adequately supported by the particulars provided.

Based on this reasoning, the delegate concluded that CrossKeys' request for dismissal of the opposition was unsuccessful on all counts. The opposition proceedings would continue, with Astracon having three months to serve evidence in support of their opposition. Costs were awarded against CrossKeys.

Orders