Cryovac, Inc. v Pechiney Plastic Packaging, Inc

[2006] APO 15

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 726277 in the name of Cryovac, Inc

Title:          Functional Barrier in Oxygen Scavenging Film

Action:          Opposition under section 59 by Pechiney Plastic Packaging, Inc and a request for an extension of time under regulation 5.10(2) to serve evidence in reply 

Decision:          Issued  21 April 2006.

Abstract

Extension of time refused.

The opponent has had more than sufficient time to prepare evidence in reply and their failure to make any progress with it suggests a lack of diligence which is inconsistent with a serious opposition.  The opponent has failed to provide a satisfactory explanation of the delays in preparation of evidence in reply.  Given the opponent’s lack of diligence and the delays already incurred in the opposition, the opponent’s interest in having the hearing deferred by granting any further extensions of time is far outweighed by the applicant’s interest in having the matter heard.  There is no suggestion that evidence is being prepared which will lead to a more just and correct determination of the opposition which might be in the public interest. 

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.  726277 by Cryovac Inc,  an opposition under section 59 by Pechiney Plastic Packaging, Inc and a request for an extension of time under regulation 5.10(2) to serve evidence in reply   

BACKGROUND

1. Patent application 726277 was filed on 7 March 1997 in the name of W. R. Grace & Co.-Conn. under the provisions of the PCT claiming priority from 2 basic US applications (numbers 60/013013 and 813752, filed on 7 March 1996 and 7 March 1997 respectively).  The applicant changed to Cryovac, Inc (the current applicant) prior to National Phase entry in Australia (under PCT rule 92bis 1). 

1. The Australian application was advertised accepted on 2 November 2000 and a notice of opposition was filed on 2 February 2001 by Pechiney Plastic Packaging, Inc.  The opponent served their Statement of Grounds and Particulars on 2 May 2001 followed by evidence in support on 2 August 2002.  The applicant served their evidence in answer on 2 August 2004.   

1. This means that evidence in reply was initially due on 2 November 2004 [regulation 5.8(4)(b)].  The opponent requested and was granted 5 extensions of time (each for three months) without objection from the applicant.  The current extension request is for three months from 2 February 2006 until 2 May 2006.  The applicant also did not formally object to this extension request but provided some submissions for the Commissioner to consider in determining the extension request.  The Commissioner wrote to the opponent on 23 February 2006 advising that she was not satisfied that the extension was appropriate in all the circumstances and invited them to provide further information to justify their extension.

2. No response was received to that letter and the parties were advised that the matter was set for hearing on 10 April 2006 with a view to refuse the extension.  Neither party appeared or provided any written submissions for that hearing.  This decision is therefore based on the material already on the case file.     

THE RELEVANT LAW

1. The requirements for granting an extension of time to serve evidence in reply are set out in regulation 5.10(2) which states:

(2) The Commissioner may 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 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):

(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party.

This provision must be read in conjunction with regulation 5.10(5):

(5)The Commissioner must not give a direction under sub-regulation (1) or grant an application under sub-regulation (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 or her 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, an extension of time or the serving of further evidence is appropriate in all the circumstances.

1. The law on extension of time provisions, and more specifically the law on regulation 5.10 has been considered by the Federal Court in Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents (2001) 50 IPR 398. It is clear from these judgments that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary, it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case.

1. Relevant aspects include the reasons for the delay, the public interest and the interests of the parties, and I will address each of these factors in my decision.

DECISION

Satisfactory Explanation for delay

1. The reasons justifying the current extension were that:

“US counsel for the Opponents are currently reviewing the evidence in answer served by the applicants in relation to this matter.  It is the intention of the opponent to obtain comment from Professor David Solomon, who is the local expert who provided comment which formed part of the evidence in support.  The further time is required to obtain specific comments from US counsel for the opponent relating to the evidence in answer and to obtain specific instructions from them, and to allow Professor Solomon to complete a review of the evidence in answer.

It is anticipated that positive instructions will be received from US counsel shortly as to whether evidence in reply is required in this matter.  There has been some delay in receiving these instructions given that the opponent company has been purchased by another entity and the matter has been reviewed in light of the purchase of that opponent company”.

1. These reasons are substantially the same as those provided in all of the previous requests.  There have been on-going problems with obtaining instructions from the US counsel since the period for serving evidence in reply commenced 18 months ago. The last three extensions refer to problems caused by a change in the opponent but such problems should have been resolved a long time ago and the opponent’s failure to do so strongly suggests that they are not seriously pursuing their opposition. 

1. Without instructions from the US counsel, the opponent does not appear to be in a position of knowing whether evidence in reply will be required.  Hence the opponent’s witness has not commenced any substantial review of the evidence in answer and there has been no progress in the evidence for 18 months.  Absent detail reasons justifying this delay, it is prima facie unreasonable.  The opponent failed to adequately explain the delay in their extension request.  They also failed to provide further reasons in support of their extension when requested by the Commissioner.  My view is therefore that the opponent has failed to provide a satisfactory explanation for their extension request. 

Interests of the Parties

1. I note that the applicant is involved with a number of matters before the Commissioner as either an applicant or opponent and these have already been discussed in a decision I issued last year on an extension of time to serve evidence in answer (Kureha Kagaku Kogyo Kabushiki Kaishav Cryovac Inc [2005] APO 45). It is not readily apparent how closely related any of these oppositions are to the current case and there has been no suggestion from either party that the other oppositions are affecting the time periods in the current opposition.

1. In the earlier case, I allowed the extension (where Cryovac was the opponent) because of the real potential for the applicant to further delay matters by filing a divisional and on the assumption that the applicant would be close to finalising their evidence within the next 2 months.  In the current case, the opponent does not have the option of filing a divisional and there is no suggestion that they are close to finalising their evidence.  Therefore neither of the reasons for the Kureha extension applies which might justify an extension in the current case. 

2. The delays to date with evidence in reply are lengthy and have not been adequately explained.  The problem of obtaining instructions from a US counsel has been on-going for 18 months and does not appear close to being resolved. The opponent has made no real progress in their evidence and has not been diligently pursuing their opposition. Their interests in having the hearing deferred are therefore far outweighed by the interests of the applicant in having the matter proceed to hearing especially as this opposition has been on-going since February 2001.

3. There may be a potential argument that the opponent is shut out of the opposition because they have been precluded from filing evidence in reply.  However, this has to be balanced against all the other competing factors.  The opponent has already served evidence in support and it is not clear that they also need to serve evidence in reply.  They have also had more than ample time to prepare their evidence but have failed to do so.  I also note that opposition is not the only forum where a patent can be challenged.  If the opponent still has concerns about the validity of the patent, they could apply to a prescribed court under section 138 for revocation or request re-examination under section 97. 

1. My view is therefore that the private interests are strongly balanced in the applicant’s favour of refusing the extension.

Public Interest

1. The public interest call for a balance between the requirements that the Commissioner deals with opposition matters expeditiously and economically and that a serious opposition is dealt with on its merits [see Ferocem Pty Limited v. Commissioner of Patents (supra) and A Goninan and Co Ltd v Commissioner of Patents and Another (supra)].  The delays that have already occurred on this case are inconsistent with an expeditious handling of the opposition in the Patent Office.  

1. There is also nothing on the file to indicate that evidence in reply is likely to lead to a more just and correct determination of the opposition.  I believe the public interest is therefore best served by refusing the current extension. There has been more than enough time for the opponent to prepare their evidence in reply.  Their failure to do so without a satisfactory explanation suggests that they are not seriously pursuing their opposition.

CONCLUSION

1. The opponent has had more than sufficient time to prepare evidence in reply and their failure to make any progress with it suggests a lack of diligence which is inconsistent with a serious opposition.  The opponent has failed to provide a satisfactory explanation of the delays in preparation of evidence in reply.  Given the opponent’s lack of diligence and the delays already incurred in the opposition, the opponent’s interest in having the hearing deferred by granting any further extensions of time is far outweighed by the applicant’s interest in having the matter heard.  There is no suggestion that evidence is being prepared which will lead to a more just and correct determination of the opposition which might be in the public interest. 

1. Balancing the public and private interests, my view is that the extension of time to 2 May 2006 should be refused.  There is no suggestion that there is any evidence ready to hand which would warrant a short “Ferrocem” type extension.  In any case, I note that if there is critical evidence, they still have the option of filing a request for leave to serve further evidence.

2. I therefore refuse the current extension to serve evidence in reply.  The provisions of regulation 5.12 now apply and the opposition officers will contact the parties shortly to arrange a suitable hearing date.

COSTS

1. The power to award costs is based on section 210 and regulation 22.8.  As this refusal was initiated by the Commissioner and neither party appeared at the hearing or provided any written submissions, an award of costs is not appropriate.

   Karen Ayers
   Delegate of the Commissioner of Patents

   21 April 2006

   Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

   Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne