E.S. & M.J. Heard v Laurence Colin Phillips

[1993] APO 24

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 588690 in the name of E.S. & M.J. HEARD PTY. LTD.

Title:  Improvements relating to agricultural machinery

Action:  Objection to a request for the Commissioner to summon a witness

Decision:  Issued            .  Request refused.  A proper request has not been made out as the opponent has not clearly established that a conflict on facts exists in the evidence.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 588690 by E.S. & M.J. HEARD, Opposition by LAURENCE COLIN PHILLIPS, and Objection to a Request for the Commissioner to Summon a Witness.

background

Patent Application No. 588690 by E.S. & M.J. HEARD (Heard) was lodged on 15 May 1987 and was advertised accepted on 21 September 1989.  LAURENCE COLIN PHILLIPS (Phillips) lodged a notice of opposition to the grant of a patent on the application on 21 December 1989.  Two other parties, Merebin Pty. Ltd. (Merebin) and Farmers Tractors Australia Pty. Ltd. (Farmers), also lodged notices of opposition to the Heard application on this date.

Following a number of extensions of time to lodge various types of evidence, filing of all evidence was completed by 21 February 1992.

Following a number of submissions by all parties on the location of the hearing to determine the oppositions to the grant of a patent on the Heard application, a hearing was set down on 2 July 1992 at Adelaide.

Following a request from Phillips' patent attorneys, Wray & Associates, to postpone the hearing because of the hospitalisation of a consultant, the hearing was deferred to 12 November 1992.

In a letter dated 29 October 1992 and sent to Heard's patent attorneys, Collison & Co., Phillips' patents attorneys enquired whether or not one of Heard's declarants, Mr. Anthony Colin Miller, would be available for cross examination at the hearing.

On being informed that Mr. Miller would not be available for cross examination at the hearing on 12 November 1992, Phillips' patent attorneys lodged a formal request for the Commissioner to summon Mr. Miller.  This request, which was lodged on 6 November 1992, was accompanied by a Statement of Case.  The request does not specify on which particular section of the 1990 or 1952 Acts it relies.

The hearing to determine the oppositions was again postponed.

The applicant objected to the request for the Commissioner to summon Mr. Miller being granted.  A hearing was set down on 19 March 1993 to determine the matter of whether or not the Commissioner should grant the request.  Both parties indicated that they did not wish to appear at the hearing but would rely on written submissions.

The other two opponents were also invited to be heard on the matter.  Farmers did not respond.  Merebin's patent attorneys indicated that they did not wish to attend the hearing but were content to rely on the submissions lodged by Phillips.

DETERMINATION OF THE RELEVANT ACT

As the patent application was both lodged and accepted before the commencement of the Patents Act1990, the provisions of subsection 234(3) and regulation 23.3 of the 1990 Act apply in relation to the opposition to the grant of a patent on the application.  These portions of the 1990 Act are as follows:

"234 (3) Chapter 5 of this Act does not apply in relation to an application mentioned in subsection (2), but Part V of the 1952 Act, as in force immediately before the commencing day, continues to apply in relation to such an application."

"23.3 (1) Division 1 of Part XIV and regulations 82 and 83A of the former patent Regulations continue to apply in relation to opposition to the grant of a standard patent on an application:
   (a) to which subsection 234 (3) of the Act ("applications under 1952 Act") refers; and
   (b) acceptance of which has been advertised under the 1952 Act.

(2) Chapter 5 of these Regulations ("opposition") does not apply to opposition to an application to which subregulation (1) applies."

In subsection 234 (3), "such an application" refers to an application and complete specification which were lodged under the 1952 Act.

It is clear from this that Division 1 of Part XIV of the former Patent regulations applies in relation to the present opposition proceedings.  However, Division 1 of Part XIV is concerned inter alia with the nature of the written declarations to be served when filing evidence in relation to opposition cases.  It makes no reference to oral evidence or the summoning of witnesses.

Division 4 of Part XIV entitled "Evidence" includes regulation 78 which states:

"Notwithstanding anything contained in Division 1 of this Part, the Commissioner may require a person who has made a declaration to attend before him to give evidence orally on oath in lieu of or in addition to, the evidence contained in the declaration and may allow the person to be cross-examined on his declaration."

Since Division 4 and, in particular, regulation 78 of the 1952 Act, is not included within the saving provisions of subsection 234 (3) and regulation 23.3 of the 1990 Act, I must determine what section of the 1990 Act the opponent relies on for the request for the Commissioner to summon the declarant.

Regulation 22.12 of the 1990 Act is entitled "Evidence" and states:

"(1) If evidence is given in writing to the Commissioner or to the Patent Attorneys Disciplinary Tribunal for the purposes of the Act or these Regulations, the evidence must be in the form of a declaration.

(2) The Commissioner may:
(a) require a person who has made a declaration to appear before him or her to give evidence orally on oath in substitution for, or in addition to, the evidence contained in the declaration; and
(b) allow the person to be cross-examined on the declaration."

Section 210 is the section of the 1990 Act which empowers the Commissioner to take such actions set out in sub-regulation 22.12 (2).  Section 210 states in part:

"The Commissioner may, for the purposes of this Act:

(a) summon witnesses; and
(b) receive written or oral evidence on oath or affirmation;
................................"

Therefore, I believe that I should determine this matter in accordance with section 210 and regulation 22.12 of the 1990 Act.

SUBMISSIONS

The opponent has provided a Statement of Case in support of his request for the Commissioner to summon Mr. Miller.  This Statement of Case lists four points which I have summarised as follows:

.The evidence in Mr. Miller's declaration contains a number of inconsistencies which can only be resolved by oral evidence by Mr. Miller under cross-examination.

.There is a discrepancy between paragraph 10 and paragraph 12 of Mr. Miller's declaration as to the nature of the invention disclosed in a provisional specification compared with photographs and a video tape of an exhibit at a demonstration held before the lodgement of the provisional application.

.Presumptions of confidentiality referred to in paragraphs 3 to 8 of Mr. Miller's declaration are "at odds with evidence given by the declarants Erlandsen and Bennie as part of the Opponents' Evidence in Support."  This conflict can best be resolved by cross-examination of Mr. Miller.

.Mr. Miller's declaration does not satisfactorily explain why Mr. Miller needed to contact the persons present at the demonstration to request confidentiality despite the presumptions indicated in the previous point.  Oral examination would give Mr. Miller the opportunity to explain this aspect of the matter.

The paragraphs of Mr. Miller's declaration to which the opponent has referred me are as follows:

"3.      THAT it was my understanding (and also I believe the understanding of those others present) that Mr. Erlandsen was acting in his capacity as an officer of the Victorian Department of Conservation and Environment when witnessing the demonstration of the prickle chain harrow.  It was my belief that his position imposed upon him a degree of discretion with regard to the equipment demonstrated to him on that day.  Furthermore, it was my understanding that this was a private disclosure, accepted as such by Mr. Erlandsen and the others.

4.     THAT I had shown the harrow presuming Mr. Erlandsen to be acting in an Official capacity and therefore under an obligation of confidentiality.

5.     THAT I have, over a number of years, had various discussions with Mr. Bennie regarding our respective approaches to the prickle chain harrow invention and it is my belief that he fully understood the circumstances surrounding the demonstration and the need for discretion.

6.     THAT I do not recall the discussions referred to by Mr. Bennie with regard to the confidentiality of the demonstrations.  If the discussions did occur they certainly were not as strongly put as suggested by Mr. Bennie in his declaration.  Furthermore, I am most surprised by the assertion of Mr. Bennie that we had in any way threatened to disrupt any patent for which he might apply.

7.     THAT Alan Alcock requested permission to make a video of the demonstration.  As I had known Alan since school days I naturally gave my permission.  Soon after the demonstration I contacted Alan and requested that he not `flash the video around'.  He agreed to this and indicated that he would make a copy for myself.  I also understand that he made a copy for Neil Bennie.  I am advised that the subsequent public display of this video by Neil Bennie may constitute an infringement of copyright.

8.     THAT Eric Yates and Mark Stoekel were present at the invitation of Mr. Erlandsen and it was therefore my understanding that they would respect the confidentiality implied by Mr. Erlandsen's position.

10.    THAT in any event all due diligence was taken in applying for a Patent to cover the prickle harrow invention.  A Provisional Patent Application was lodged on 15th May 1986 barely more than one month after the demonstration.

.
.

12.    THAT the prickle chain harrow demonstrated on 8th April 1986 was an early demonstration version.  Australian Patent Application No. 588690 was for a considerably improved prickle chain harrow.  As can be seen from the Patent specification and in particular the figures, the Millman Prickle Chain is somewhat more sophisticated than that shown in the photographs of Mr. Erlandsen and the video supplied as an exhibit by Mr. Bennie."

The applicant has provided two sets of written submissions the main points of which I have summarised as follows:

.Summoning Mr. Miller will only add further delay to the hearing of the oppositions. There already has been considerable delay caused by the opponents.

.If there are discrepancies in Mr. Miller's declaration, the opponents have had ample opportunity to address the discrepancies in their Evidence-in-Reply.

.The opponents have had considerable time in which to prepare their case.  One has to question the validity of the concerns raised in the Statement of Case which has been lodged at such a late stage and after the hearing on the oppositions has been postponed twice.

.There is no conflict between paragraphs 10 and 12 of Mr. Miller's declaration.  The provisional specification lodged after the demonstration and the complete specification subsequently lodged embody a number of concepts not present in the device exhibited at the demonstration.  This is clear from a comparison of the content of the complete specification lodged in relation to the present application no. 588690 and the video tape supplied as an Exhibit by Mr. Bennie.  Consequently, Mr. Miller is not needed to clarify this as there is no conflict in facts.

.The question of confidentiality in relation to the demonstration is a matter for the hearing officer to decide when the main opposition is determined.  There is no argument that the demonstration took place and that certain people attended that demonstration.  Thus the facts in relation to the demonstration are not contested. There is only a difference of opinion as to confidentiality.  As stated in the Hearings Manual at Section 2.7.1, the Commissioner is unlikely to exercise his discretionary power if there is conflict on opinions rather than facts.

.Mr. Miller's declaration does not indicate that he contacted the persons present at the demonstration to request that they preserve confidentiality.  At paragraph 7 of his declaration, Mr. Miller states that he contacted Allan Alcock whom he requested not to "flash the video around".  Mr. Bennie's declaration states that Mr. Miller contacted him after the demonstration but Mr. Miller indicates in his declaration that he cannot recall this. There is no suggestion in any other evidence that Mr. Miller contacted anybody else who was present at the demonstration.  The giving of oral evidence by Mr. Miller will not add anything to what has already been said in his declaration.

.Summoning of Mr. Miller would cause unnecessary hardship as Mr. Miller is a farmer and it is fast approaching harvest time.  If the Commissioner does require further evidence then this should be achieved by the opponents supplying a list of interrogatories to which Mr. Miller can provide replies.

.In American Cyanamid Company v Nalco Chemical Company 24 IPR 131 at page 134, the hearing officer states:

"It seems to me therefore that it is up to the person making the request to establish that there is a conflict on facts and that there is a reasonable likelihood that this conflict could be resolved by oral evidence.  In this respect I agree with the opponent's suggestion that there will be general inconvenience to the summoned witnesses, their employers and the general public.  This inconvenience should be caused only if there is a reasonable likelihood of the conflict on facts being resolved by cross‑examination."

The opponents have not established that there is a conflict on the facts.  Further, even if there is a conflict on facts, they have not established that there is a reasonable likelihood that the conflict could be resolved by oral evidence.

.In view of the inconvenience which would be caused to Mr. Miller, the request should be refused.

DECISION

The applicant's submissions refer to an earlier decision of mine, American Cyanamid Company v Nalco Chemical Company 24 IPR 131, in which I was required to consider an objection to a request for the Commissioner to summon witnesses.

In that decision I indicated that if a proper request was made then the Commissioner should grant such a request.  In order for a proper request to be made, it was up to the person making the request to establish that there is a conflict in facts (as opposed to a conflict in opinions) and that there is a reasonable likelihood that this conflict could be resolved by oral evidence.  I also indicated that it is up to the person making out the request to indicate where in the evidence lodged in relation to the opposition there exists a conflict on facts.  The Commissioner should only consider those portions of the evidence so indicated when deciding whether of not a proper request has been made.  I also pointed out that the Commissioner should take into account the general inconvenience which would be caused to the witnesses and the public when considering whether or not a proper request has been made.

I will now consider each of the points raised by the opponent in support of his request for Mr. Miller to be summoned in order to determine whether or not a proper request has been made.

The first point does not provide any specific indication of the nature of the inconsistencies and therefore I will ignore it.

The second point refers to an apparent discrepancy between paragraph 10 and paragraph 12 of Mr. Miller's declaration.  Having read these two paragraphs I do not believe that such a discrepancy exists.  I agree with the applicant's explanation of these two paragraphs.  In any case, if there is such a discrepancy or an internal inconsistency in the declaration of this nature, the delegate of the Commissioner who is required to decide the substantive opposition has all the material on file to allow him or her to decide what are the correct facts.

The third point concerns the question of confidentiality.  Paragraphs 3 to 5 and 7 and 8 of Mr. Miller's declaration to which the opponent has referred me illustrate that Mr. Miller made an assumption, correct or not, that the other parties present would be aware of an obligation of confidentiality.  However whether or not an assumption is correct is different from a situation in which a conflict exists as to whether or not something actually happened e.g. whether or not there was an oral agreement made between the parties.  Consequently, on considering the parts of the evidence to which I have referred, I do not believe that the opponent has satisfactorily demonstrated that there is a conflict on the facts.  I have come to this opinion because I do not believe that there is conflict as to whether or not an assumption was made. It is rather that the alleged conflict lies in whether or not the assumption that Mr. Miller made was a correct one.  I agree with the applicant's submissions that this conflict relates to whose opinion is correct rather than what are the correct facts.
Further, even if there is a conflict on the facts, I believe that the taking of oral evidence by the Commissioner from Mr. Miller would in no way provide any further assistance in the deciding of the substantive opposition.  The dispute appears to be whether or not Mr. Miller's assumption about the state of mind of other parties present at the demonstration was correct.  If any assistance were needed to clarify this issue, then it seems to me that cross-examination of the other parties would be of more assistance than cross-examination of Mr. Miller.

Paragraph 6 of Mr. Miller's declaration is somewhat different in that, in it, Mr. Miller is questioning the existence and content of certain conversations which are alleged by Mr. Bennie to have taken place.  In considering this apparent disagreement, I find myself in somewhat of a quandary.  As I have indicated earlier, I believe that it is up to the person making out the request to indicate which particular parts of the evidence show that a conflict on the facts exists.  Unfortunately the opponent has referred me to only one side of the apparent conflict.  While the opponent has made a general reference to the evidence given by declarant Bennie, there is no specific reference to particular paragraphs of Mr. Bennie's declaration.  Consequently, I am unable to readily compare the two different views on the matter to determine whether or not there is any conflict on the facts.

While it might be possible for me to read through the whole of the Bennie declaration in order to try and identify the relevant parts, I do not believe that this is a course I should take.  The onus is on the person making out the request to identify the relevant parts of the evidence which establish that a conflict on the facts exists.  It is not up to the Commissioner to peruse what might be copious amounts of evidence to try and determine if such a conflict exists.  Consequently, I do not believe that the opponent has discharged the onus of proof required to establish that there is a conflict on facts in relation to paragraph 6 of Mr. Miller's declaration.

A further complication in this matter has been the fact that three opponents exist but only one, Phillips, has requested the Commissioner to summon Mr. Miller.  Mr. Miller's declaration has been served as evidence-in-answer on all three opponents and paragraph 6 deals with evidence lodged by one of the other opponents.  Bennie is a declarant for this other opponent (as is Erlandsen who is referred to in paragraphs 3, 4 and 8 of Mr. Miller's declaration).  Phillips has not referred me to any conflict on facts between his own evidence and the applicant's evidence.  While I do not think that the Commissioner should necessarily refuse a request solely on the grounds that the conflict on facts exists in evidence other than that supplied by the person making the request, it certainly does not assist Phillips in making out a proper request in the present case.  As the other opponent is represented by a different firm of patent attorneys, the opponents will, in all likelihood, be represented by different patent attorneys at the opposition hearings.  Also, Phillips has not indicated that the resolution of any conflict on facts which might exist between the other opponent's evidence and the applicant's evidence may prejudice his own case.  Therefore, I do not believe that Phillips or his legal representative should be able to cross-examine Mr. Miller on any conflict on facts which exists between Mr. Miller's evidence and the other opponent's evidence.

The fourth point refers to an alleged inadequacy in Mr. Miller's declaration.  It does not refer me to any particular part of the declaration.  I do not see that there is any conflict on facts associated with this point.  Whether or not a declaration provides a satisfactory explanation about a particular matter does not necessarily imply that a conflict on facts exists.  In this respect I agree with the applicant's submissions on this point.  It seems to me that cross-examination of Mr. Miller would not provide any further assistance to the delegate of the Commissioner who has to decide the substantive opposition.

As I have already mentioned in relation specifically to paragraph 6 of Mr. Miller's declaration above, in all four points raised by the opponent to justify the request for Mr. Miller to be summoned, particular reference is made only to Mr. Miller's declaration.  No specific reference is made to any of the paragraphs of the opponent's declarations.  It seems to me that, if there is a true conflict on what the relevant facts are, it is more likely that this conflict will become apparent if reference is made to corresponding parts of the other party's evidence.

In summary, because I have found that none of the points referred to in Phillips' Statement of Case establish that there is any conflict on the facts, I do not believe that Phillips has made out a proper request.

CONCLUSION

As I have found that the opponent has not made out a proper request, I refuse to grant the request for the Commissioner to summon Mr. Miller.

As the hearing to decide the three oppositions has been postponed a number of times, I am conscious that the matter should be heard as soon as possible.  Therefore, in accordance with subregulation 22.23 (1) of the Patent regulations 1991, I hereby notify all the parties involved in the substantive oppositions that the hearing of the substantive oppositions will take place on the 29th and the 30th of June, 1993 in Adelaide.

R.W. HALLETT

Delegate of the Commissioner of Patents

Patent attorneys for the applicant:    Collison & Co, Adelaide

Patent attorneys for Laurence Colin Phillips:

Wray & Associates, Perth

Patent attorneys for Merebin Pty. Ltd.:
  Kelvin Lord & Co, Perth