DuBois Ltd v Brackley Industries Pty Ltd

[2000] APO 63

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 715920 in the name of DUBOIS LTD

Title:          Apparatus for Holding a Compact Disc

Action:          Opposition under section 59 by BRACKLEY INDUSTRIES PTY LTD; request under regulation 5.5 for dismissal of the opposition.

Decision:          Issued            .

Abstract

The statement of grounds and particulars as originally filed is manifestly inadequate, grounds being either not sufficiently particularised or not particularised at all.  An amended statement has now been filed, which is sufficiently particularised to show the existence of a serious opposition on each ground, and will be dealt with under regulation 5.9 in due course.

In view of this, and a consideration of the circumstances involved in the handling of the case, it is appropriate for the opposition to proceed on all grounds.  The request for dismissal of the opposition, in whole or in part, is not made out.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 715920 by DUBOIS LTD, opposition under section 59 by BRACKLEY PTD LTD, and request by the applicant under regulation 5.5 for dismissal of the opposition.

BACKGROUND

Patent application 715920 (the application) was filed as 38112/95 on 3 November 1995 by DuBois Ltd (the applicant) under the provisions of the PCT.  It was advertised accepted on 10 January 2000.  A notice of opposition was lodged on 29 February 2000 by Brackley Pty Ltd (the opponent), followed by a statement of grounds and particulars on 29 May 2000.  On 29 June 2000 the applicant requested the Commissioner to dismiss the opposition (or partially dismiss it or require further or better particulars).

A hearing was held in Canberra on 13 October 2000.  The applicant's and opponent's patent attorneys in this matter are, respectively, Patent Attorney Services and Phillips Ormonde & Fitzpatrick.  Present at the hearing were Mr Calum Henderson, solicitor of the firm Tress Cocks & Maddox, on behalf of the applicant, and Mr David Carmichael, patent attorney of the second-mentioned firm, on behalf of the opponent.

I note that a request to amend the statement of grounds and particulars was lodged on 4 October 2000.  The Commissioner is not permitted to allow such a request during consideration of a request for dismissal (regulation 5.9(2)(a)).  I indicated at the hearing that it (the hearing) would need to proceed essentially on the basis of the original statement, but that some reference as to how the amendments might affect the dismissal action was permissible.

Dismissal

Dismissal of an opposition is provided for by regulation 5.5, which so far as is relevant in this case, reads as follows:

"5.5 (1) An applicant may:
(a)   within one month of being served a copy of a statement by an opponent under   subregulation 5.4 (1) ("filing of statement");.….
request the Commissioner in the approved form to dismiss the opposition.
(2) As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.
(3) The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition."

There is no suggestion that these statutory requirements have not been met.

The principles to be applied in considering a request for dismissal of an opposition are similar to the reasons for summary dismissal, set out by Barwick CJ in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129:

"…..the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his lack of a cause of action - if that be the ground on which the court is invited, as is this case, to exercise its powers of summary dismissal - is clearly demonstrated.  The test to be applied has been variously expressed; 'so obviously untenable that it cannot possibly succeed'; 'manifestly groundless'; 'so manifestly faulty that it does not admit of argument'; 'discloses a case which the Court is satisfied cannot succeed'; 'under no possibility can there be a good cause of action'; 'be manifest that to allow them' (the pleadings) 'to stand would involve useless expense'."

Guided by this, the practice of the Commissioner is that an opposition, or a ground or grounds of an opposition, will only be dismissed if it is clear that the opposition or ground of opposition could not possibly succeed.  The onus of showing this lies with the applicant.  This practice has found recent judicial support in Stack v Commissioner of Patents (1999) 43 IPR 663. In most cases this assessment will be based primarily, if not wholly, on the content of the statement of grounds and particulars. That is to say, is a specified ground of opposition properly supported by particulars?

The purpose of the particulars is to inform the applicant of the case to be answered, and the detail needed will depend on the circumstances.  This purpose is effected by setting out the material facts necessary to support the ground of opposition, but without necessary reference to matters of law and evidence (discussed in Mobay Corp v The Dow Chemical Co (1992) 24 IPR 379).

An opposition may be dismissed in whole or in part.  So long as at least one ground is properly particularised the opposition should not be dismissed entirely (L'Air Liquide, Societe Anonyme Pour L'Etude Et L'Exploitation Des Procedes Claude v The Commonwealth Industrial Gases Ltd (1991) 24 IPR 77).

If there are no material facts to support a ground of opposition the Commissioner may direct that the ground be dismissed (Genelabs Technologies Inc v Murex diagnostics Australia Pty Ltd (1996) 36 IPR 54). However a ground cannot be dismissed where only some of the particulars are ineffective (Norwood Industries v Macbird Floraprint (1992) 24 IPR 368).

In the appropriate case the Commissioner can make a direction under regulation 5.10(1) that the opponent provide further and better particulars, however directions cannot be made that the particulars be amended in a specified way, nor that certain particulars be struck out.  Directions may be made that certain particulars are not available to be argued at the substantive hearing.  See Mobay v Dow.

However in considering the adequacy of particulars all of the relevant circumstances should be considered, rather than the application of a prescriptive test (Supreme Corq v Anthony Smith Australia Pty Ltd [1999] APO 19, 8 March 1999).

Reasons for the request to dismiss

The request relevantly states:

"Our reasons for making this request are that the statement of grounds and particulars do not define a foundation for the opposition and does not provide any material facts for basing each and every ground of opposition referred to in that statement and the particulars do not inform the applicant of the case it has to face."

The statement of grounds and particulars

Grounds

· Ground 1 - The invention, so far as claimed in any claim, when compared with the prior art base as it existed at the respective priority dates of those claims, is not novel.

· Ground 2 - The invention, so far as claimed in any claim, does not involve an inventive step.

· Ground 3 - The invention, so far as claimed in any claim, was not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies at the respective priority dates of those claims.

· Ground 4 - The complete specification of the application does not comply with subsection 40(2) or (3) of the Patents Act 1990.

Particulars

· Ground 1 - I will not reproduce the particulars in full.  Items 2(a)-2(h) are along the lines of the following, mainly involving different organisations:

"(a) Publication and public distribution of promotional material by Polygram and/or related companies displaying compact disc containers prior to the priority dates of those claims."

Item 2(i) consists of a list of 23 patent specifications, with no reference to particular parts of the specifications or to particular claims. Another particular states that the claims are not novel when these documents are read in the light of (unidentified) common general knowledge. A final particular states that the invention claimed is "not otherwise a patentable invention within the meaning of Section 18(1) of the Patents Act 1990."

· Ground 2 - This is reproduced in full:

"5. The invention, so far as claimed in the claims of the opposed application, is obvious and does not involve an inventive step when considered in the light of the prior art base.  In particular, the invention as claimed in the claims of the opposed application would have been obvious to a person skilled in the art of designing and manufacturing compact disc containers in the light of the common general knowledge as it existed in the patent area at the respective priority dates of those claims, whether that knowledge is considered separately or together with any one or more of the prior art, being information that a skilled person could, at the earliest priority date of the claimed invention, be reasonably expected to have ascertained, understood, and regarded as relevant.  Such common general knowledge includes, but is not limited to, each item of the prior art referred to in" (the ground 1 particulars).

· Ground 3 - This is also reproduced in full:

"6. Having regard to any one or more of the prior art and/or the common general knowledge in the field in Australia at the earliest priority date of the claims, the alleged invention so far as claimed in any claim of the opposed application:
(a) does not meet the threshold requirement for an invention;
(b) is a mere collocation of known integers, each performing its known function/activity and having no working interrelationship;
(c) represents merely the use of a combination of particular known integers, the properties of which make them suitable for that use; and
(d) involves no inventive merit."

· Ground 4 - This is also reproduced in full:

"7. The complete specification of the opposed application does not comply with Section 40(2) of the Act by failing to define the invention fully, including the best method known to the applicant of performing the invention.

8. The complete specification of the opposed application does not comply with Section 40(2) of the Act since it does not end with a claim or claims defining the invention.

9. The complete specification does not comply with Section 40(3) of the Act since the claim or claims are not clear or succinct.

10. The complete specification of the opposed application does not comply with Section 40(3) of the Act since the claim or claims are not fairly based on the matter described in the specification."

SUBMISSIONS

From the opponent

· An opposition or a ground should be dismissed only if it is clear that it could not possibly succeed (General Steel).

· There is precedent in recent decisions of the Commissioner for considering how proposed amendments to the statement of grounds and particulars would affect the dismissal action (Supreme Corq, American National Can Co v Cryovac Inc [2000] APO 20, 9 March 2000).

· The amended statement shows that this is a serious opposition, on all four grounds.

· The Commissioner has a broad discretion and any direction should be appropriate in all the circumstances of the case.

· In this case there are special circumstances, in that the firm of attorneys originally engaged gave poor advice and handled the case poorly.  This resulted in what is an admittedly defective statement and necessitated a change of attorney.

· In setting the matter down for hearing insufficient time was allowed by the Office for the opponent to recover from the early bad advice.

· If there is evidence of a serious opposition and grounds are particularised to some degree, even though inadequately, there is precedent for directing the filing of further and better particulars (Fujisawa Pharmaceutical Co Ltd v Banyu Pharmaceutical Co Ltd (1994) APO 52, Compri Technic v Pneumatic Systems International 37 IPR 382).

· Even if a ground is not particularised at all dismissal should not automatically follow.  If there is evidence of a serious opposition, including consideration if necessary of a proposed amended statement, there could be justification for a direction for further and better particulars (Supreme Corq).

· A direction for further and better particulars is the appropriate finding for each ground, as either they have been particularised (grounds 1 and 2), partly particularised (ground 3), or are now particularised (ie in the amended statement, ground 4).

· Where a discretion exists, as here, it should not be exercised so as to shut out a serious opposition (Kaiser Alumimium & Chemical Corp v Reynolds Metals Co [1969] 120 CLR 136).

· Mr Carmichael sought to raise the issue of whether the amendments to the statement would be unduly prejudicial to the applicant.  Mr Henderson objected to this for a number of reasons, indicating that in his opinion the only proper consideration of the amended statement at this time would be for the purpose of considering if there is a serious opposition.  I agreed with this.

From the applicant

· The applicant has objections to the amended statement, and this proceeding should not be a de-facto hearing on the amended statement.

· Any order which is made for further and better particulars should be time-limited, failing to meet which should result in the dismissal of the opposition.

· Any failings in the preparation of the case by the opponent's first advisers is an issue between them, and the effects should not be disadvantageously visited upon the applicant.

· The statements relied on by the opponent in Supreme Corq are in fact obiter.

· Any directions for further and better particulars should be only for the purpose of salvaging a ground, not for a complete re-formulation of it.

· It is conceded that it may be possible to salvage grounds 1 and 2 by further and better particulars.

· However the particulars of ground 3 indicate no material facts, that is facts to which the applicant can respond, and are no more than re-phrased legal principles.  This ground should be dismissed.  Ground 4 is also not particularised and should be dismissed.

DECISION

Grounds 1 and 2

It became apparent at the hearing that the gulf between the parties in this action is not vast.  It has not been suggested that this is not a serious opposition, and I believe it to be so.  The opponent concedes that none of the grounds are adequately particularised, and admits of the possibility that grounds 3 and 4 might not be particularised at all.  The opponent concedes that grounds 1 and 2 are somewhat particularised, and may properly be salvaged by further and better particulars.

I agree with this.  I would direct that further and better particulars be provided in support of grounds 1 and 2, however I note that amendments have already been proposed which provide further and better particulars and these will be dealt with in due course under regulation 5.9.

Grounds 3 and 4

In my opinion grounds 3 and 4 are not particularised at all.  Ground 3 is no more than a statement of some case-law principles, and ground 4 no more than extracts from section 40 itself.  What are the consequences of this?

Mr Henderson for the applicant submits that these grounds should consequently be dismissed.  On the other hand Mr Carmichael for the opponent submits that, notwithstanding any finding I may make of an absence of particulars (as in fact I have), having regard to all the circumstances of the case, it is nevertheless appropriate for me to direct further and better particulars, and that there is precedent for doing this.

In Mobay v Dow at 394 the delegate said:

"The question of when it is appropriate to request further and better particulars rather than dismissal could be resolved in the way suggested by BC Cairns in Australian Civil Procedure, (1985), p116: 'A distinction must be drawn between a failure to plead a material fact with sufficient particularity and a failure to plead a material fact at all.  Failure to plead a material fact at all may not be remedied by particulars.  But where a material fact is pleaded, but not with sufficient particularity, then it is proper for it to be supplemented by particulars.'"

However I was directed by Mr Carmichael to Supreme Corq where the delegate states:

"Supreme would have me entertain a rather technical argument that no material fact is pleaded but I do not believe that this is the case.  If I am wrong in this conclusion I do not think the finding in Mobay, while persuasive, can be followed in the absence of a consideration of all relevant circumstances.  Here ASA have requested amendment of the particulars and……..I note that the proposed particulars in support of ground 1 have been greatly expanded on.  One may ask why those particulars were not provided in the first instance but I do not think that this alone would justify the Commissioner dismissing the ground of opposition when the particulars now sought to be included indicate that the issue is being pursued seriously……..This situation is distinguished from the case where the Commissioner finds no indication of material facts with the only possible conclusion being that the ground is an ambit assertion."

In the present case the amended statement does provide better particulars for grounds 3 and 4, and they indicate a serious opposition.  However I do not agree, and neither I think does the delegate in Supreme Corq say, that a ground which was originally completely unparticularised can necessarily be validated, merely by the filing of subsequent amendments which now show that there is a serious opposition on that ground.

This would appear to go against what must surely be the intent of the legislative scheme, which is to make the applicant aware at the earliest practicable time of the full case it has to answer, and I have not been referred to any other supportive precedent.  Also the statement is clearly obiter.

However in this case there is another relevant factor which I also need to consider.  Fairly shortly after the request for dismissal was filed the opponent changed their firm of attorneys, which second firm quite promptly prepared and filed the amended statement.  I think I can reasonably infer from the file, and Mr Carmichael says, that the opponent considered itself to be in the hands of their first attorneys, and felt let-down by them.

I consider that the facts show that the opponent has acted with serious intent and in good faith in this matter.  While in many cases, as pointed out by Mr Henderson, the remedy for the recipient of poor professional advice is an issue for those parties, I do not think it really applies here.  If grounds 3 and 4 are allowed to stand I doubt that the applicant would be seriously disadvantaged.  They are likely to be the least important grounds in the opposition, and in any case grounds not relied on can be considered by the substantive delegate under section 60(3).

In all the circumstances I do not consider it is appropriate to dismiss grounds 3 and 4.

CONCLUSION

The case for dismissal of the opposition as a whole or in part has not been made out.  In view of regulation 5.8(1)(a)(iii) the time for serving evidence in support is three months from the date of this decision.

COSTS

The action for dismissal has failed, however the statement of grounds and particulars as originally filed is manifestly inadequate.  Consequently I award costs against the opponent Brackley Industries Pty Ltd.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Patent Attorney Services

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick