Dyno Nobel Inc. v Orica Explosives Technology Pty Ltd - [2015] APO 37

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dyno Nobel Inc. v Orica Explosives Technology Pty Ltd [2015] APO 37

Patent Application: 2004293486

Title:Method of blasting multiple layers or levels of rock

Patent Applicant:  Orica Explosives Technology Pty Ltd
Opponent:  Dyno Nobel Inc.
Delegate:  Matthew Lee
Decision Date:  9 July 2015
Hearing Date:  Written submissions filed on 5 June 2015 and 15 June 2015
Catchwords:  PATENTS – Extension of time to file responding evidence to further evidence – reg 5.10(4) and 5.10(5) – unsatisfactory explanation of delay - nature and significance of evidence supports allowing the extension – interests of parties favours allowing the extension – extension of time allowed.

Representation: Patent applicant: Davies Collison Cave Law
Opponent:Shelston IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004293486

Title:Method of blasting multiple layers or levels of rock

Patent Applicant: Orica Explosives Technology Pty Ltd
Date of Decision: 9 July 2015
DECISION
I allow the extension of time as requested by Orica to file responding evidence.
Costs are awarded according to Schedule 8 against Dyno Nobel.
REASONS FOR DECISION
Background

Patent application 2004293486 was filed by Orica Explosives Technology Pty Ltd (“Orica”) on 13 October 2004 as an application under the Patent Cooperation Treaty. The present application was advertised as accepted on 2 April 2009 and a notice of opposition to the grant of a patent was filed in the name of Dyno Nobel Inc. (“Dyno Nobel”) on 2 July 2009. A statement of grounds and particulars was filed on 2 October 2009.
Each of the evidentiary stages included several granted extensions of time, with evidence in support completed on 2 November 2010, evidence in answer completed on 28 November 2011 and evidence in reply completed on 2 January 2013.
Multiple rounds of further evidence were then initiated and completed. The present proceedings relate to the fourth round of further evidence as initiated by the opponent’s further evidence filed on 16 January 2015. Leave to file this further evidence was given by the delegate of the Commissioner on 8 April 2015, and the delegate allowed the applicant one month to file evidence in response to this further evidence. On 8 May 2015 the applicant requested an extension of time of one month to be granted to file evidence in response, and on 20 May 2015 the opponent requested a hearing on the extension of time matter.
Written submissions were received from both parties on 5 June 2015, and submissions in reply were received on 15 June 2015. The request for the extension of time to file evidence in response to the further evidence filed by the opponent on 16 January 2015 is the subject of this decision.
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 (the “New Regulations”) as they apply to patent oppositions. Pursuant to subregulation 23.36, item 2, an application to file further evidence in this opposition is governed by subregulations 5.10(4) and 5.10(5) as they existed immediately before 15 April 2013 (the “Old Regulations”). This is because the notice of opposition was filed before 15 April 2013. These subregulations state:
(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (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 own 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.
Both parties have filed submissions in relation to the filing of the responding evidence and I am therefore satisfied that they have been notified and have made representations concerning this application.
The discretion under subregulation 5.10(4) is broad and should not be limited by an imperative compliance with a particular requirement such as a satisfactory explanation of delay. Rather the discretion should be exercised if it is appropriate in all the circumstances and thus even if a satisfactory explanation of delay is not given it is within the public interest that the nature and significance of the evidence needs to be considered. This follows from the construction of subregulation 5.10(5) by Burchett J in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243 at 247 and also by Sackville J in A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213. The interests of the parties should also be considered (Ferocem at 247, Goninan at 222).
The explanation of delay
According to the submissions made by Orica and the declaration made by Dr Timothy Hagan dated 4 June 2015 (the “Hagan Declaration”), the applicant sought to make contact with Dr Hagan on a number of occasions between 8 April 2015 and 28 April 2015. These attempts were at least a phone call to his discontinued landline, a call to his mobile phone which was diverted to Dr Hagan’s message bank and two emails which received no response. However, no further details have been provided from the applicant as to when these attempts were made, nor of any other attempts to contact Dr Hagan during this period.
After these unsuccessful attempts, the lawyers for the applicant then made telephone requests to two Orica blast engineers on 1 May 2015 and 7 May 2015. The final attempt on 7 May 2015 saw contact made between the lawyers and Mr Hagan on the afternoon of 7 May 2015, where Dr Hagan advised that he was prepared to work on a response after 18 May 2015 (but not before due to other commitments). He received a copy of the declaration by Mr Peter Duniam on 20 May 2015 (the “Duniam Declaration”), and his responding declaration was completed on 4 June 2015.
It is clear that after contact was made with Dr Hagan on 7 May 2015 that further delays until 18 May 2015 were due to the unavailability of the expert witness due to his prior commitments. However, I am not satisfied that the delay in contacting Dr Hagan during the sequence of events between 8 April and 28 April has been adequately explained, with no details forthcoming from the applicant regarding when the attempts to contact Dr Hagan occurred. It may very well be that the applicant attempted to contact Dr Hagan at regular intervals during this particular period, but it is also entirely possible that the applicant also made the attempts early on during this time and then waited until the final week before the due date for the evidence to contact the blast engineers. Similarly there has been no explanation as to the nature of the first attempt to contact the Orica blast engineers and why it took so long to attempt to contact Dr Hagan in that manner, only a week out from the due date, and make a second attempt only on the day before the due date for the responding evidence.
I am of the opinion a reasonable explanation for the delay has not been given, and as such this weighs against granting the extension of time to file the responding evidence.
Nature and significance of the evidence
The nature and significance of the responding evidence is apparent as the evidence (in the form of the Hagan Declaration) has already been filed on 5 June 2015. Exhibit TNH-21 to the Hagan Declaration is directed towards providing comments on the Duniam Declaration filed as further evidence 16 January 2015. Dr Hagan’s declaration includes evidence on the definition of a stand-up blast, the effect of particular time delays between blasts, and more generally the veracity of the evidence presented in the Duniam Declaration. I believe that this information in Dr Hagan’s declaration is relevant and contains evidence that is likely to be significant to the opposition matter at hand. The nature and significance favours allowing the further evidence.
The interest of both parties and the public interest
As is often the case the parties have legitimate interests that lie in conflict with each other on opposite sides of the balance. Dyno Nobel have submitted that a hearing date should be promptly set and allowing the extension would further delay the already prolonged opposition matter. They also submit that allowing the evidence would impose extra costs on the opponent. Orica have submitted that not allowing the evidence would be detrimental to the applicant and would weigh against a correct determination of the opposition on its merits. They also submit that the potential delays in filing the responding evidence are mitigated as no further delays would be caused by the opponent in preparing the evidence since the evidence has already been filed.
Although in most cases the considerations submitted by both parties will normally neutralise each other in equal measure, I believe that in this instance the balance of interests of the parties tip in favour of allowing the extension of time. No further delays are caused by allowing the extension as the evidence has been filed and completed. Additionally, any potential extra legal costs borne by the opponent will be equally borne by the applicant, and so the opponent is not put at any greater disadvantage in comparison. I also agree with the applicant that there is a strong public interest in having all relevant material available for the hearing on the opposition matter so that a decision can be properly reached on merit.
Therefore I find that the interests of the parties and the public interests favour allowing the extension of time.
Balance of the considerations
The nature and significance favours allowing the responding evidence, as does the interests of the parties and the public interest, but the explanation of delay does not. As noted above even in the absence of a satisfactory explanation of the delay the discretionary power should be exercised if it is appropriate to do so after consideration of all the circumstances, and on balance, I am of the opinion that the extension should be allowed. Therefore I allow the extension of time to file the responding evidence.
Costs
I see no reason to depart from the normal outcome that costs should follow the event. I award costs in accordance with Schedule 8 against Dyno Nobel.
Matthew Lee
Delegate of the Commissioner of Patents