CSR Building Products Limited v United States Gypsum Company
[2019] APO 15
•29 March 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CSR Building Products Limited v United States Gypsum Company [2019] APO 15
Patent Application: 2013335106
Title:Pregelatinized starch with mid-range viscosity, and product, slurry and methods related thereto
Patent Applicant: United States Gypsum Company
Opponent: CSR Building Products Limited
Delegate: D. S. Triffett
Decision Date: 29 March 2019
Hearing Date: Written submissions filed on 21 February 2019 and 28 February 2019
Catchwords: PATENTS – extension of time to file evidence in support – regulation 5.9 – whether opponent has acted promptly and diligently – whether opponent has made all reasonable efforts to meet filing requirements – extension of time granted.
Representation: Patent attorney for the applicant: James & Wells
Patent attorney for the opponent: Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013335106
Title:Pregelatinized starch with mid-range viscosity, and product, slurry and methods related thereto
Patent Applicant: United States Gypsum Company
Date of Decision: 29 March 2019
DECISION
The opponent has met the requirements of paragraph 5.9(2)(a) of the Patent Regulations 1991 (Cth) (Patent Regulations). I grant an extension of time for filing evidence in support until 21 December 2018.
For the purposes of subregulation 5.8(2), this decision represents notice that all of the evidence in support has been filed. The time for filing evidence in answer is 3 months from the date of this decision.
I award costs according to Schedule 8 against United States Gypsum Company.
REASONS FOR DECISION
Background
This matter relates to patent application 2013335106 in the name of United States Gypsum Company (US Gypsum), which was advertised as accepted on 8 March 2018. A notice of opposition to the grant of the patent was filed by CSR Building Products Limited (CSR) on 7 June 2018. The Statement of Grounds and Particulars (SOGP) was filed on 7 September 2018. A request to amend the SOGP was filed on 2 January 2019, and was allowed by a delegate of the Commissioner (delegate) on 7 February 2019. Evidence in Support (EIS) was due to be completed by 7 December 2018.
CSR filed an application for an extension of time of one month to file EIS (the application) on 7 December 2018. Following a request by the delegate for further information dated 21 December 2018, CSR provided that information on 10 January 2019. On 25 January 2019, the delegate indicated an intention to grant the extension. US Gypsum requested to be heard on 1 February 2019.
The law
On 15 April 2013 the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents Regulations 1991 (Cth) (the Regulations) as they apply to patent oppositions. The law governing extensions of time to file evidence in a patent opposition depends upon the date on which the opposition commenced. Where the evidentiary period commenced on or after 15 April 2013, as in the present case, the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013.
Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:(i) has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy[1] (the TRED decision) and Merial Limited v Novartis AG[2] (the Merial decision). The principles applied in those decisions, which I accept as correct, are that I must ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there any exceptional circumstances that warrant the extension?
[1] [2013] APO 57; (2013) 105 IPR 291.
[2] [2013] APO 65; (2013) 105 IPR 133.
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.
The Explanatory Statement accompanying the Amendment Regulation confirms the seriousness of this test:
“A major cause of protracted opposition proceedings is extensions to the various time periods for providing evidence. The law has developed in such a way as to significantly narrow the Commissioner's discretion to disallow extensions. As a result, oppositions are normally subject to multiple extensions of time and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
New subregulation 5.9(2) addresses this issue by introducing a new test for determining whether an extension of time for filing evidence is justified. The Commissioner will not be able to extend time periods unless one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner of this. Once the conditions in subregulation 5.9(2) are met, the Commissioner still has the discretion to consider whether or not it is appropriate that an extension of time be granted. In applying the test, the Commissioner will not be required to give a direction to extend a period solely because of delays caused by a legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner that an extension is justified under the test, the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time.”
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extension (subregulation (3)):
The Commissioner must determine the length of the extended period having regard to what is reasonable in the circumstances.
The application for extension of time
10.Information filed by CSR in the application and in the further information will be identified as necessary as part of this decision. I will provide a general summary of the actions taken by CSR in the preparation of the EIS.
11.CSR filed their Notice of Opposition on 7 June 2018. Prior to, and after, filing the SOGP, CSR initially canvassed Robert Bruce (Expert 1) as a suitable expert to assist in respect of the opposition. Expert 1 had been engaged in previous oppositions between the parties. However, after further discussions, and for a number of reasons including health concerns of Expert 1, CSR decided to seek another expert.
12.Around the time of filing the SOGP, CSR identified a suitable North American-based expert, Steven Sucech (Expert 2). CSR initially sought email contact with the expert to confirm freedom and availability to act, before commencing the formal process of engaging that expert. CSR then instigated a series of fortnightly telephone interviews with Expert 2, in a step-by-step process to gather evidence in a two-stage manner. After each of the telephone interviews, CSR recorded Expert 2’s comments and discussed them with the expert during the following interview for review, correction and approval. These revised and verified comments began to form the basis of the Expert 2’s evidence. CSR submitted that although Expert 2’s declaration was progressing towards a final draft to be filed by the 7 December 2018 deadline, a further short period of time was required to finalise and execute his evidence.
13.On 21 December 2018, a delegate requested further information in support of CSR's extension of time application. In particular, the delegate requested further information as to why Expert 2 was identified on 11 September 2018 but was not contacted with regard to his ability to act until 24 September 2018, and the delegate requested further information as to the circumstances surrounding Expert 2’s lack of availability for three weeks commencing on 2 November 2018.
14.In response to the delegate's request for further information, CSR submitted that the delay between identification of Expert 2 and contacting him was due to a delay in obtaining approval from CSR Building Products Limited to engage Expert 2, as well as the time needed to resolve his ability and/or willingness to act, given his former employment with the applicant. CSR further submitted that Expert 2 was unavailable for three weeks due to business and personal commitments, and CSR was not informed of this until his closing comments in a telephone interview on 26 October 2018.
15.As a matter of formality, US Gypsum submits that, in accordance with Regulations 22.12(1) and 22.13(a), CSR should present the evidence it relies on to support the request in the form of a declaration from the person (or persons) who asserts to have acted promptly and diligently.[3] In response, CSR submits that US Gypsum’s citing of Regulations 22.12(1) and 22.13(a) is erroneous, as there is no reference in Regulation 5.9 to a requirement to support a request for an extension of an evidentiary period with “evidence”.[4]
[3] US Gypsum’s Submissions at [9].
[4] CSR’s Submissions in Response at [6].
16.I agree with CSR that the Patent Regulations fail to prescribe a requirement that a request for an extension of an evidentiary period be supported by evidence in declaratory form.
Has the party made all reasonable efforts to comply with all the relevant filing requirements?
17.The requirement in paragraph 5.9(2)(a)(i) imports a consideration of reasonableness of the relevant party's conduct over the totality of the opposition proceedings, rather than its compliance with the particular evidentiary period in question, which is addressed by the specific requirement of paragraph 5.9(a)(2)(ii).[5] If a party has been prompt and diligent in relation to the preparation and filing of evidence, it will have normally made all reasonable efforts to comply.
[5] Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15; (2014) 106 IPR 568 at [18].
18.Following the timely filing of the Notice of Opposition, the filing of the SOGP was the first requirement under Chapter 5 with which CSR was required to comply. CSR filed the SOGP on time on 7 September 2018.
19.It is self-evident that CSR made reasonable efforts to comply with the relevant filing requirements prior to the EIS evidentiary period, as is evidenced by the fact that the Notice of Opposition and the SOGP were both filed on time.
CSR’s choice to follow the Federal Court guidelines
20.CSR submits that soon after the EIS period commenced, CSR’s attorneys explained to CSR the importance of engaging Expert 2 in accordance with the rules and procedures set down by the Federal Court of Australia for the engaging of experts.[6]
[6] CSR’s Submissions at [24].
21.US Gypsum submits that CSR following the time-consuming process of the rules and procedures of the Federal Court provides no support for the promptness and diligence of CSR because this is not a proceeding before the Federal Court.[7]
[7] US Gypsum’s Submissions at [44].
22.The submissions of US Gypsum go on to state that:
“CSR was intent on carrying on collecting the most favourable evidence to its position with no respect for the deadline, or the expeditious resolution of the opposition proceeding, and therefore was not acting reasonably, promptly or diligently in light of the time-sensitive position it had placed itself in.”[8]
[8] US Gypsum’s Submissions in Response at [20].
23.The Federal Court in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315, endorsed the use of a two-stage process in the preparation of evidence before the Federal Court. Parties to an opposition before the Commissioner are not required to prepare their evidence in a two-stage manner.[9] Consequently, the use of a two-stage process is a matter of choice, and parties must ensure that no delay arises from this choice.[10]
[9] Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr. Company [2007] APO 8 at [29]-[31].
[10] Aristocrat Technologies Australia Pty Ltd v IGT [2007] APO 7 at [43]-[45]; IGT v Aristocrat Technologies Australia Pty Ltd [2007] APO 27 at [28].
24.While the two-stage process to provide evidence is a matter of choice for CSR, given that the amended SOGP filed on 2 January 2019 raised the ground of inventive step, I do not consider it unreasonable to prepare the evidence as part of a two-stage process to prevent ex post facto analysis.
25.However, it does not follow that I consider following the two-stage process as a reason to justify any delay to file the EIS within the required timeframe.
Was the failure to file the evidence despite acting promptly and diligently?
26.US Gypsum allege that a lack of promptness and diligence on the part of CSR in the preparation of their EIS can be seen in several areas, which I will consider in turn. I observe at the outset that the requirement that a party act promptly and diligently is not setting a standard of perfection;[11] there needs to be behaviour that is within the range of what could be considered prompt and diligent.[12] An opinion as to the reasonableness, promptness and diligence of a party can be formed based on an explanation of what the party has done, when it was done, and how long it took, and an explanation of any significant delays.[13]
[11] Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63 at [33].
[12] Osmose New Zealand v Zelam Limited [2014] APO 49; (2014) 108 IPR 398 at [18]-[22].
[13] TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57; (2013) 105 IPR 291 at [76].
Explanation of actions under CSR's timeline
27.US Gypsum submits that CSR's timeline fails to explain why the listed events were critical to the completion of the evidence, or even how they were relevant.[14] US Gypsum further submits that merely noting that a series of telephone conversations took place does not evidence what those telephone conversations involved and why those conversations were critical to the completion of evidence, with it being entirely unknown whether these telephone conversations lasted 1 minute, 1 hour or longer.[15] US Gypsum further refers to Aquatron Robotic Technology LTD v Zodiac Pool Care Europe (the Aquatron decision)[16] which states “[i]t is, however, seldom helpful to have a chronology without an explanation”.[17]
[14] US Gypsum’s Submissions at [15].
[15] US Gypsum’s Submissions at [16]-[17].
[16] [2016] APO 88 at [29]-[30].
[17] US Gypsum’s Submissions at [18].
28.In response CSR submits that the telephone meetings catered for the international time difference and ran for 1-3 hours, and were set up to ensure the progression of the evidence, as it is reasonable to expect that expert witnesses have other commitments and therefore may be available to prepare evidence for only limited periods of time per week.[18] CSR further submit that there is no reason to provide the “minutes” of those discussions. It is sufficient to state that the discussions were towards the progressive production of a detailed and comprehensive declaration.[19]
[18] CSR’s Submissions at [31].
[19] CSR’s Submissions in Response at [12].
29.As set out in the TRED decision at [76]:
“An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently.”
30.In the Aquatron decision, the delegate states:
“The Commissioner will be assisted by an explanation – a narrative that explains the strategy being followed, how the events fit into that strategy, problems confronted and how the strategy was modified as necessary.”
31.The original application for an extension of time dated 7 December 2018, provided both a chronology of actions taken during CSR’s progression of the EIS, and a narrative that explained the strategy being followed. In my view, the information provided by CSR is sufficient to allow me to form my own opinion on whether CSR had acted promptly and diligently. Bearing in mind that there is no requirement for perfection, I consider CSR’s approach and timeline to complete the evidence in support to be prompt and diligent.
Delay between Expert 1 being ruled out and Expert 2 being engaged
32.US Gypsum submits that CSR has not explained the extent of the delay between ruling Expert 1 out, and engaging Expert 2.[20]
[20] US Gypsum’s Submissions at [21].
33.In response, CSR notes at item 1 of the application:
“Initially, an expert (Robert Bruce), who has been engaged in previous oppositions between the parties, was canvassed. However, after further discussions, and for a number of reasons including health concerns of that expert, it was decided to seek another expert.”[21]
[21] US Gypsum’s Submissions at [20].
34.CSR first canvassed the use of Expert 1 on 22 June 2018, which was during the period between the filing of the Notice of Opposition and the filing of the SOGP.[22] CSR also submits that they were in regular communication with Expert 1 during and after this period, and they were also aware of Expert 1’s ongoing issues, eventually deciding that it would not be appropriate to engage him as an expert in the preparation of evidence.[23]
[22] CSR’s Submissions at [23].
[23] CSR’s Submissions at [23].
35.US Gypsum submits that CSR should have ensured the availability of its expert prior to the commencement of the EIS phase, particularly given the voluminous nature of the expert evidence being relied upon by CSR, the narrow field of technology, and the use of an overseas expert.[24] US Gypsum further submits that merely being “in regular communication” does not help “understand the actions they have taken”.[25]
[24] US Gypsum’s Submissions in Response at [7].
[25] US Gypsum’s Submissions in Response at [14].
36.While there is no obligation on CSR to ensure the availability of its expert prior to the commencement of the EIS phase, I consider this point to be moot as CSR canvassed the use of Expert 1 prior to filing the SOGP. This is a reasonable course of action considering that Expert 1 is an expert that CSR has engaged in previous oppositions. I also do not consider that CSR must further detail the regular communication they had with Expert 1, as there is no need to detail the minutes of these conversations.
37.I am satisfied that CSR, in seeking to engage an expert that they have used in previous oppositions, and then deciding to seek another expert due to health concerns of the first expert, acted promptly and diligently.
Delay between identification and contact of Expert 2
38.US Gypsum notes that, having selected a suitable candidate on 11 September 2018, CSR took nearly two weeks to make contact with that expert.[26] US Gypsum submits that it would have been reasonable to at least try to contact Expert 2 at an earlier stage to see if he was even available, before deciding whether he would be engaged.[27]
[26] US Gypsum’s Submissions at [38].
[27] US Gypsum’s Submissions at [40].
39.CSR's explanation for the delay was that, due to the nature of Expert 2’s former employment of 23 years with the applicant, CSR had to first establish the freedom of Expert 2 to act in the current opposition, due to the possibility of a conflict of interest.[28] CSR undertook internal inquiries before providing its approval to its attorneys to engage Expert 2.[29] Once CSR was confident of Expert 2’s freedom to act, CSR contacted him by email on 24 September 2018.[30]
[28] CSR’s Submissions at [25].
[29] CSR’s Submissions at [25].
[30] CSR’s Submissions at [26].
40.US Gypsum submits that, as CSR’s evidence phase had already commenced, and time was of the essence, CSR should have sought an expert that was unfettered by any such issues.[31] US Gypsum further submitted that as a matter of law, freedom to act can only be established by contacting Expert 2 and enquiring whether there were any professional (e.g. contractual) or personal elements restraining his involvement, and that CSR cannot make that determination before contacting him.[32]
[31] US Gypsum’s Submissions in Response at [21].
[32] US Gypsum’s Submissions in Response at [22].
41.Given US Gypsum’s own admission of the narrow field of technology, I regard CSR engaging Expert 2 as reasonable in the circumstances. Similarly, given Expert 2’s former employment relationship with US Gypsum, I find it reasonable that CSR’s attorneys would want to enquire with CSR as to the appropriateness of engaging this expert, and whether he is legally free to act.
42.Expert 2 was identified on 11 September 2018 but not contacted until 24 September 2018. That is, 13 days elapsed between “identifying” the expert and “contacting” the expert. Was this delay reasonable? Given the importance of ensuring Expert 2 was independent, and that there was no conflict of interest in him acting for CSR, I consider 13 days to make this assessment, and for CSR’s attorneys to consult with CSR regarding the suitability of this expert is not unreasonable. It follows that CSR acted promptly and diligently despite this delay.
Delay due to Expert 2’s unavailability of three weeks
43.US Gypsum argues that a diligent party would have been clearly and proactively asking the expert at regular intervals whether the expert's availability will be compromised, rather than waiting to be told.[33] US Gypsum further argues that CSR has not explained why it did not promptly and diligently schedule numerous teleconferences in the week 29 October to 2 November, instead of relying on a single teleconference the day of Expert 2’s departure, of unknown duration.[34]
[33] US Gypsum’s Submissions at [52].
[34] US Gypsum’s Submissions at [53].
44.US Gypsum further draws my attention to the Merial decision, where the delegate determined that he could not accept that persevering with an expert "in the knowledge that he would be taking extended leave was consistent with acting promptly and diligently".[35]
[35] US Gypsum’s Submissions at [54].
45.CSR submits that in the teleconference of 27 September 2018, CSR informed the expert of the 7 December 2018 deadline for filing of the evidence and questioned the expert as to his general availability over the period up until the 7 December 2018 deadline.[36] CSR submits that Expert 2 indicated that he would generally be available over this period.[37] CSR further submits that, during the fortnightly interviews between CSR and the expert, Expert 2 was regularly made aware of the deadline for filing of the evidence.[38]
[36] CSR’s Submissions at [30].
[37] CSR’s Submissions at [30].
[38] CSR’s Submissions at [26].
46.CSR notes that it was not until the telephone meeting of 26 October 2018 that Expert 2 informed CSR of his planned unavailability during the period of 3 November 2018 to 28 November 2018, and his unavailability to provide any technical input to the evidence.[39] In order to mitigate the effect of this unexpected unavailability, CSR immediately set up another meeting to be held on 2 November 2018, the day prior to the expert's unavailability.[40]
[39] CSR’s Submissions at [33].
[40] CSR’s Submissions at [34].
47.CSR submits that in the week commencing Monday 3 December 2018, it became apparent that the evidence could not be put into an acceptable form by the 7 December 2018 deadline, despite CSR contacting Expert 2 every day of that week, including multiple times on some days.[41]
[41] CSR’s Submissions at [37].
48.US Gypsum submits that at the point in time of Expert 2’s unavailability, he had provided comments on his experience, the CGK and the prior art.[42] US Gypsum further appear to argue that an appropriate mitigation strategy upon learning of the expert’s absence, would be engaging a new expert, rather than assuming it would gain an extension of time to file the evidence.[43]
[42] US Gypsum’s Submissions in Response at [27].
[43] US Gypsum’s Submissions in Response at [28]-[29].
49.My view is that the Merial decision can be distinguished in the present case. In the present case there was no prior “knowledge” that the expert would be taking extended leave, as this was not raised until 26 October 2018, despite frequent reminders from CSR of the deadline for completing the EIS. Furthermore, I am satisfied that the single teleconference with Expert 2 on 2 November 2018 prior to his departure was an appropriate mitigation strategy in the circumstances, as this allowed the preparation of the evidence to progress in the expert’s absence. It follows that CSR acted promptly and diligently despite this delay.
Other submissions
50.US Gypsum also submitted that:
(i)CSR’s apparent two-month delay, between 23 October and 7 December 2018 to transcribe Expert 2’s evidence on common general knowledge; and
(ii)CSR’s lack of an explanation as to why a declaration that was apparently undergoing final review on 7 December took a further two weeks to file,
was evidence of a lack of promptness and diligence. Neither of these submissions has merit. US Gypsum’s submissions suggests that evidence on the common general knowledge is prepared by “merely transcribing” the expert’s opinion. While there is no doubt some recording of an expert’s opinion, it is obvious from a perusal of almost any declaration filed in other opposition proceedings that the preparation of a declaration involves much more than mere transcription. It also seems clear that, while the word “final” appears with “declaration” in the reasons supplied by CSR, it is accompanied by the word “draft”. I do not think a two-week delay in the circumstances is unreasonable.
Summary
51.The question of whether a party has been prompt and diligent is assessed by looking at the behaviour of the party as a whole. CSR canvassed the use of an expert early, only to have to seek to engage a different expert due to health concerns of the preferred expert. The withdrawal of CSR’s preferred expert does not reflect on CSR’s promptness or diligence. CSR’s attorneys discussed with CSR whether it was appropriate to engage a particular, new expert given that the new expert had previously worked for US Gypsum. Such discussions also do not reflect on CSR’s promptness or diligence, as such discussions were reasonable in the circumstances. Finally, the unexpected absence of the new expert late in the evidentiary stage, at a time critical to the preparation of the evidence, also does not reflect on CSR’s promptness of diligence since CSR was not informed of this absence despite making reasonable enquiries. I am satisfied that CSR acted promptly and diligently at all times during preparation of its evidence.
52.As I have found that CSR acted promptly and diligently during the EIS evidentiary period, it follows that CSR has made all reasonable efforts to comply with the EIS evidentiary period.
Were there exceptional circumstances?
53.It is unnecessary to consider whether there were exceptional circumstances, and CSR made no submissions to that effect, as I have determined that the criteria of paragraph 5.9(2)(a) have been satisfied.
Discretionary matters
54.Once the mandatory requirements of paragraph 5.9(2)(a) have been met, an extension is not automatic; the Commissioner “may” extend the period for filing evidence. US Gypsum submits that, given the opportunity to provide further information in light of an insufficient explanation and the need to be given an extension of time to provide the further information, such activity from an established patent attorney firm was evidence of a lack of promptness and diligence. However, as CSR submits, the activity noted occurred after the evidence due date. As such, I can see no reason not to exercise that discretion.
Conclusion
55.I have concluded that CSR has met the requirements of paragraph 5.9(2)(a). I now need to consider what length of extension is reasonable in the circumstances. CSR completed their evidence in support on 21 December 2018 and I consider that an extension to this date is appropriate.
Costs
56.Both parties sought their costs.
57.US Gypsum submitted that if CSR’s extension was granted, no costs award should be made.[44] US Gypsum submits that CSR’s evidence was insufficient to justify the extension of time, and hence these proceedings were initiated.[45] US Gypsum further submitted that CSR needed to rely on further evidence in its submissions, and to the extent that any new evidence is relied on by the Commissioner in making any determination to grant the extension, no costs award should be made.[46]
[44] US Gypsum’s Submissions in Response at [42].
[45] US Gypsum’s Submissions in Response at [42].
[46] US Gypsum’s Submissions in Response at [42].
58.I do not consider that my discretion to grant the extension was based on any further evidence in CSR’s submissions. As such, I see no reason to depart from the normal approach that costs follow the event. I will award costs according to Schedule 8 against US Gypsum.
D. S. Triffett
Delegate of the Commissioner of Patents
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