Dyno Nobel Inc. v Orica Explosives Technology Pty Ltd - [2014] APO 42

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dyno Nobel Inc. v Orica Explosives Technology Pty Ltd [2014] APO 42

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:  Dr S.D. Barker
Decision Date:  25 June 2014
Hearing Date:  Written submissions completed on 26 May 2014
Catchwords:  PATENTS – extension of time to file evidence in response to further evidence – nature and significance of evidence considered – extension granted

Representation: Patent applicant: Davies Collison Cave
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: 25 June 2014
DECISION
Extension of time granted to file evidence in response until 26 June 2014.
I award costs according to Schedule 8 against Orica Explosives Technology Pty Ltd.
REASONS FOR DECISION

This matter relates to patent application 2004293486 in the name of Orica Explosives Technology Pty Ltd (Orica). The application was advertised as accepted on 2 April 2009 and a notice of opposition to the grant of a patent was filed by Dyno Nobel Inc. (Nobel) on 2 July 2009.
Nobel served a statement of grounds and particulars on 2 October 2009. Evidence in support was completed on 2 November 2010. Evidence in answer was completed on 25 November 2011. Evidence in reply was completed on 21 December 2012. A first round of further evidence was completed on 25 November 2013. Orica was allowed to serve a second round of further evidence (Dyno Nobel Inc v Orica Explosives Technology Pty Ltd [2014] APO 13), and the matter is now at the stage of evidence in response to that further evidence. Evidence in response was due by 26 April 2014, and Nobel has requested an extension of the time to file that evidence until 26 June 2014.
The Commissioner advised on 23 April 2014 that she was satisfied with the reasons in support of the application, and Orica has asked for a hearing. The hearing was conducted by means of written submissions.
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 Regulations) as they apply to patent oppositions. The present matter is governed by regulation 5.10 of the Regulations as in force immediately prior to 15 April 2013. This follows from regulation 23.36(2), item 2, of the Regulations.
Regulation 5.10(2) gives the Commissioner the power to extend the time for taking a step prescribed in Chapter 5, and further evidence is a procedure prescribed in that Chapter. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5)(b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
The considerations relevant to this question have been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
a)The reason why the evidence was not served earlier (Ferocem at 247)
b)The public interest in determining a serious opposition on its merits (Goninan at 222)
c)The interests of the parties (Ferocem at 247)
The application for extension of time
The application for extension of time runs for 5 pages, so I will not quote it in full. The first part of the application provides background about actions taken during the time already available:
"A first round of further evidence has been completed in this matter. The Applicant's further evidence comprises the declarations of: Brent dated 24 September 2013 (Brent#2), Dare-Bryan dated 23 September 2013 (Dare-Bryan#1) and Hagan dated 10 September 2013 (Hagan#4). The Opponent's evidence in response comprises the declarations of: Humphreys dated 23 October 2013 (Humphreys#3) and Kanchibotla dated 25 November 2013 (Kanchibotla#3).
On 11 December 2013, the Applicant requested leave to file a second round of further evidence, and indicated that its evidence would be filed by 20 January 2014. On 31 December 2013, the Opponent formally objected to the request for leave and provided a submission in support of its objection. On 20 January 2014, the Applicant proceeded to file its second round of evidence nonetheless, namely the second declaration of Mr Dare-Bryan dated 20 January 2014 (Dare-Bryan#2). On 23 January 2014, the Applicant filed a submission in answer, and on 30 January 2014 the Opponent filed a submission in reply."
"Upon receipt of the second round of further evidence, the Opponent returned to both Dr Humphreys and Dr Kanchibotla and engaged them to review and comment on Dare-Bryant#2. An initial round of comments on Dare-Bryant#2 was received from Dr Humphreys in the week of 27 January 2014, and an extensive teleconference held with him in the week of 3 February 2014. Dr Humphreys' comments were converted into declaratory form and further communications with him in March and April 2014. His fourth declaration was filed on 17 April 2014 (Humphreys#4).
Dr Kanchibotla was provided with Dare-Bryan#2 in the week of 27 January 2014. For the week of 3 February 2014 Dr Kanchibotla was overseas at a mine site (Laos) where email and telephone access was limited. Dr Kanchibotla returned to his offices early in the week of 10 February 2014, and an extensive teleconference was held with Dr Kanchibotla in that week. Dr Kanchibotla's comments were converted into declaratory form and further communications held with him over the course of March and April 2014. Dr Kanchibotla's fourth declaration is well advanced and it is anticipated that his declaration will be finalised and filed prior to the end of the current period."
The application for extension of time then refers to the computer simulations that were produced by Dr Dare-Bryan. Nobel are attempting to obtain a notice to produce in relation to the computer simulation:
"On 27 February 2014, the Opponent filed a (first) Notice to Produce request seeking production of the information above, which request was declined by the Commissioner on 4 March 2014. On 27 March 2014, the Opponent responded to the Commissioner's decision to provide additional information in support of the Notice, and simultaneously provided a (second) narrowed and more focussed Notice to Produce request. On 8 April 2014, the Commissioner's Delegate again declined the request. On 11 April 2014, the Opponent corresponded with the Commissioner and responded to her additional requests for further information and simultaneously provided a (third) narrowed and more focussed Notice to Produce request.
On 16 April 2014 the Commissioner corresponded with the parties considered [sic] that a prima facie case had been made for issuing a Notice. The Opponent has requested a stay in the progress of the main opposition proceeding until the request to produce is finally dealt with. The Opponent's experts will require some time to review the information once it is in hand and comment on it, and the Opponent hereby reserves it [sic] rights to request extensions of time in order to enable its experts to review and comment on the information produced by Mr Dare-Bryan."
The application also refers to the need for Dr Kanchibotla to carry out his own computer simulations to address perceived shortfalls of the simulation work undertaken by Dr Dare-Bryan:
"The new computer simulation work Dr Kanchibotla has been engaged to perform is aimed at addressing the shortfalls in the simulation work undertaken by Mr Dare-Bryan … It is submitted that the nature and significance of the new evidence upon which the Opponent intends to rely is critical in addressing the shortfalls of the evidence of Mr Dare-Bryan."
Explanation of delay
The application for extension of time lists the events that have happened, and the things that have prevented Nobel from completing their evidence in time. Significantly, there is a need to obtain material pursuant to a Notice to Produce and to carry out simulations. Orica have suggested that Nobel could have commenced work to respond to Dr Dare-Bryan's simulations at an earlier time (they suggest that in September 2013 Nobel should have been aware of the need for such evidence).
While it is clear that Nobel have been proceeding reasonably in recent times, it is not apparent that they could not have commenced investigating the need for a new simulation at an earlier time. The explanation of delay does not support the extension of time.
Public interest
When considering the public interest, it is necessary to form a view as to the nature and significance of the evidence that is being prepared (Goninan at 225-6). Nobel is seeking to prepare evidence in relation to the modelling by Dr Dare-Bryan. Orica have suggested that there is already evidence from Nobel about the limitations of modelling (in general) and that further evidence on the point will not be significant [paragraph 21 of Orica's submissions]:
"The Applicant submits that the Opponent has already made its criticisms of Dr Dare-Bryan's blast simulation evidence which will either be accepted, rejected or given substantial or little weight by the Delegate."
The complexity of this case means that it is difficult to form a simple view on whether the evidence in question will be significant. It seems to me that evidence that challenges the reliability of the simulations done by Dr Dare-Bryan will be of similar significance to that attaching to Dr Dare-Bryan's evidence. The thrust of the submissions by both parties is that the evidence of Dr Dare‑Bryan is important to the opposition. It follows that any evidence that addresses Dr Dare‑Bryan's evidence directly (not just generally) is likely to be significant. Consequently, I am satisfied the public interest favours the extension.
Interests of the parties
As is normal in such matters, the interests of the parties seem to be opposed. However, it is not apparent to me that the difference in interests is any greater than is normal in the context of a patent opposition.
Conclusion
Taking account of all information available to me, the nature of the evidence suggests that it could be significant. Other considerations are not sufficient to offset this consideration. I am satisfied that it is appropriate to allow the extension of time.
Costs
I see no reason to depart from the normal conclusion that costs should follow the event.
Dr S.D.Barker
Delegate of the Commissioner of Patents