Dyno Nobel Inc v Orica Explosives Technology Pty Ltd - [2014] APO 13

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dyno Nobel Inc v Orica Explosives Technology Pty Ltd [2014] APO 13
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:  Matt Kraefft
Decision Date:  26 February 2014
Hearing Date:  Written Submissions, completed on 30 January 2014
Catchwords:  PATENTS – application to serve further evidence – evidence likely to be significant – other factors overall also point to allowability of the evidence – further evidence allowed

Representation: Patent applicant: Davies Collison Cave, Melbourne.
Opponent:Shelston IP, Sydney.

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: 26 February 2014
DECISION
The applicant’s further evidence, filed on 20 January 2014, is allowed.
The opponent is allowed two (2) months from the date of this decision to serve responding evidence.
REASONS FOR DECISION
Background

Orica Explosives Technology Pty Ltd is the applicant of patent application 2004293486. Dyno Nobel Inc is the opponent. The parties have completed the evidence-in-support, evidence-in-answer and evidence-in-reply stages. The applicant subsequently applied to and served further evidence in this opposition to which the opponent has filed responding evidence.
The applicant has applied to serve a second set of further evidence to which the opponent has objected. The parties have been heard by way of written submissions on whether the applicant should be allowed to file the second set of further evidence.
Applicable law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) commenced. This regulation significantly amended the Patent Regulations 1991 as they apply to patent oppositions. The ability to file further evidence is not available for oppositions commenced on or after 15 April 2013. For oppositions commenced before 15 April 2013, the provisions of the previous regulation 5.10 of the Patent Regulations apply. The present opposition is in the latter category.
The relevant sub-regulations, under regulation 5.10, 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.
In the present case I am satisfied that the parties have been notified, and have had an opportunity to make representations (and in fact did make representations). The question that must be considered is whether I am satisfied that it is appropriate to allow the service of the further evidence. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398 on the operation of previous sub-regulation 5.10(5) in relation to extensions of time. The general principles that flow from these decisions are as follows.
a)The power is discretionary:    Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220)
b)Explanation of delay:            The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at 247)
c)The public interest:                The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at 222)
*         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at 225-6)
*         The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*The public interest is not protected merely because some evidence has already been served. (Goninan at 225)
d)The interests of the parties:    The interests of the party seeking the exercise of discretion are a relevant consideration (Ferocem at 247). It is also relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at 247, Goninan at 222)
These considerations are equally relevant to the determination of the present request for further evidence. Previous decisions of the Commissioner on further evidence illustrate different aspects of these considerations, but do not represent binding rules.
Application to Serve Further Evidence
The application to serve further evidence seeks to file a further statutory declaration from Mr Peter Dare-Bryan. The applicant states this is necessary to address questions, provide clarification for and address criticisms made by the opponent’s declarants, Mr Michael Humphreys and Mr Sarma Kanchibotla, in their evidence in response.
Explanation of Delay
The responding evidence of Mr Humphreys was filed on 24 October 2013. The responding evidence of Mr Kanchibotla was filed on 25 November 2013. The applicant made its application to serve further evidence on 12 December 2013. The applicant subsequently filed the further evidence on 20 January 2014. I consider there has been no undue delay.
Nature and Significance of the Evidence
The further evidence the applicant seeks to adduce is to address several perceived shortcomings in the applicant’s first set of further evidence that the opponent has raised in its evidence in response. I outline below each of the major points in turn.
The first is that the SoH model appears to be proprietary to the applicant and therefore not publicly available. The applicant seeks to adduce evidence that the SoH uses a commercially available numerical modelling engine.
The second is that the SoH model does not explicitly model the penetration of explosion gases. The applicant seeks to adduce evidence of comparisons of the results from SoH to those of another model that models gas flow.
The third is a statement from the opponent that the holding of the bottom deck in position in the simulation of Blast Design M104-inv, until the bottom deck fires long after the main deck, is highly artificial with no explanation of why such a constraint has been introduced into the simulation. The applicant wishes to provide the explanation.
The fourth is that no information is provided regarding the percentage of material cast by the main deck in Blast Design M104. The applicant wishes to provide the percentage for both Blast Designs M104 and M104-inv, together with reasons underpinning the different movement of the main and baby decks.
The fifth is that no apparent account is taken of the effect of buffering in the applicant’s modelling in respect to Blast Design M104. The applicant seeks to adduce evidence that Mr Dare-Bryan did consider the depiction of very limited buffering and why he treated it in the way that he did.
The sixth is that the basis, on which the values for the parameters selected in respect to particular detonation data have been calculated, has not been provided, nor is there any sensitivity analysis to their likely variation. The applicant wishes to provide that information.
The seventh is that it is unclear what Mr Dare-Bryan considers to be “significant” in respect to his statement that his simulation of Blast Design M104 shows a significant amount of baby deck material having moved beyond the original high wall location into the void. The applicant wishes to provide that information including the percentage movement.
The eighth is that the applicant wishes to address some assumptions made by the opponent’s Mr Humphreys in respect to the constraints in the modelling of Blast Design M104-inv to prevent the depiction of some forward movement of material in the bottom deck. Such movement would inevitably occur as the material in the upper deck moves forward and drags over the top of the material in the lower deck. The applicant wishes to clarify its evidence.
The ninth is the particular simulation of a through-seam blast not including a free face. The applicant seeks to adduce evidence that it is extremely rare that a through-seam blast is fired with a free face, and, in the event that it is so fired, to include discussion in the evidence about that.
The above points largely seem to relate to minor additions sought to be made over the applicant’s first set of further evidence. Moreover the applicant stated in its application to serve further evidence that the proposed further evidence would be “very limited”. Compared to the claimed invention, as the claims presently stand, the significance of much of the evidence sought to be adduced is not readily apparent, especially as to how the proposed further evidence would be significant over the evidence already served.
It appears the applicant’s intentions were largely about replying to the opponent’s evidence in response because the opponent has identified several shortcomings in the applicant’s first set of further evidence. The opponent on the other hand has stated its evidence in response was strictly in reply to the first set of further evidence and that there were no questions asked or clarification sought by its declarants. On this basis the opponent argued it was inappropriate to allow the applicant’s second set of further evidence.
In disputes between parties, I expect each party would usually find or attempt to find shortcomings in the other’s evidence. To allow parties to continually address all shortcomings with continuous rounds of further evidence is counter to the requirements for the efficient and orderly administration of the patent system. On the other hand, as mentioned above, the law places an emphasis on having regard to the significance of the evidence sought to be adduced.
The proposed further evidence was filed on 20 January 2014. Having viewed the evidence, I find it quite instructive as to its nature and significance. There is a wealth of new evidence that deeply addresses the shortcomings raised in the opponent’s evidence in response. Mr Dare-Bryan’s declaration amounts to 20 pages with a voluminous amount of accompanying exhibits. Contrary to the applicant’s original indication that the evidence would be “very limited”, this evidence appears to significantly enhance the earlier further evidence. Moreover the evidence relates in a detailed way to features of the claimed invention. These include the blasting of multiple layers of material in a blast field, free faces in blast fields, the throw features of blast material, and buffering aspects.
I consider it is far from certain whether this second set of further evidence will be significant in this opposition. On the other hand there is enough reason to consider it likely to be significant.
Interests of the Parties
The applicant submitted the further evidence would enable a considered and comprehensive analysis and determination of the opposition to be made. The opponent submitted that its evidence in response was strictly in reply to the applicant’s first set of further evidence. Consequently the clarification of evidence from the applicant by way of still further evidence to address the opponent’s evidence in response was inappropriate. The opponent also mentioned the additional cost of dealing with the further evidence and the consequent delay in resolving the opposition were detrimental. The balance of the parties’ interests is largely equivalent.
Conclusion
The evidence sought to be adduced is likely to be significant in this opposition. The other considerations overall also point in favour of allowing the further evidence to be served.
I allow the applicant’s further evidence, filed on 20 January 2014, to be served.
It is appropriate to allow the opponent an opportunity to respond to this further evidence. Given the rather voluminous nature of the applicant’s further evidence, I allow the opponent two (2) months from the date of this decision to serve responding evidence.
Costs
Costs normally follow the event. The application to serve further evidence has been successful. On the other hand the allowability of the applicant’s further evidence principally became apparent only after the evidence was filed. I conclude the opponent had a basis to object to the allowance of the further evidence.
In these circumstances I make no award of costs.
M G Kraefft
Delegate of the Commissioner of Patents