Ei Dupont De Nemours and Company v Elf Atochem S.A

[1999] APO 73

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 686434 in the name of E I DUPONT DE NEMOURS AND COMPANY

Title:          Constant Boiling Compositions

Action:          Request to amend the statement of grounds and particulars in respect of an opposition by ELF ATOCHEM S.A.

Decision:          Issued            .

Abstract

An amendment to the statement of grounds and particulars was requested to include a new item of prior art under the grounds of lack of novelty and non-compliance with subsections 40(2) and 40(3).  The item of prior art was already a particular of a co-pending opposition to the same application.

The item of prior art (a patent document) had been known to the opponent, in a sense, for a number of years, as it had considered filing an opposition to it.  The opponent had also been aware of the document for some months as a result of obtaining a copy of the other opponent's statement of grounds and particulars, and also the document had been cited during examination of the application.  As well, there were indications that one of the opponent's experts had been aware of the document since the previous year as a result of evidence he had provided in another opposition matter.

However, the evidence indicated that the opponent had not been aware of the significance of the document until just before requesting an amendment of the statement of grounds and particulars, and this was the appropriate point in time from which the delay should be taken.

The fact that the applicant had been made aware of the document through the other opposition meant that including it in the present opposition was less prejudicial than it might otherwise have been.

The request to amend the statement of grounds and particulars was allowed.

In view of the fact that the opponent had only provided its evidence in support of the request on the eve of the hearing, only a half of the opponent's costs were awarded against the applicant.

A request to set the time for serving evidence in answer in the other opposition to the same as it was for this opposition was denied as being outside the scope of these proceedings.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.686434 by E I Du Pont De Nemours and Company and a request to amend the statement of grounds and particulars for an opposition by Elf Atochem S.A.

BACKGROUND

Patent application 33130/95, entitled "Constant Boiling Compositions", was filed on 9 October 1995 in the name of E I Du Pont De Nemours and Company (Du Pont).  It was advertised accepted on 5 February 1998 and allocated the 6-figure number 686434.

Notices of opposition to application 686434 were filed on 5 May 1998 by Elf Atochem S.A. (Elf) and ICI Chemicals & Polymers Limited (ICI), and statements of grounds and particulars in respect to each opposition were served on the applicant on 5 August 1998.  The serving of evidence in support of each opposition was completed on 2 September 1999 and 30 September 1999, respectively.

On 10 August 1999 Elf filed a request to amend its statement of grounds and particulars.  Du Pont objected to the request, and the matter was set for a hearing in Canberra on 28 October 1999.  At the hearing Du Pont was represented by Mr Michael J. Houlihan, patent attorney of the firm Callinan Lawrie, assisted by Ms Elizabeth Sutherland, and Elf was represented at the hearing by Miss Shahnaz Irani, patent attorney of the firm Spruson & Ferguson, assisted by Dr John McCann.  Both parties appeared by phone.

THE AMENDMENT TO THE STATEMENT

The statement of grounds and particulars invokes all the grounds available under section 59 of the Patents Act. Included in the particulars for each ground is a large number of items of prior art. The particulars of the ground of lack of novelty (non-compliance with subparagraph 18(1)(b)(i)) lists twenty-two items of prior art. These twenty-two items of prior art are also particulars of the other grounds of opposition, because of references in those particulars to the particulars for the ground of novelty.

The amendment at issue in this matter seeks to add a new item of prior art to those listed in the particulars for the ground of novelty, and thus, effectively, to the particulars of each other ground.  The new item of prior art is Australian patent 641740, which I will refer to hereafter as "the Daikin patent".  The addition of this document to the particulars has spawned additional particulars elaborating the relevance of this document to two grounds, namely lack of novelty and non-compliance with subsections 40(2) and 40(3).  Thus Elf proposes to amend the particulars of the ground of lack of novelty to include the following paragraph:

"[The Daikin patent] discloses refrigerant composition.  Figs 3, 7 and 8 disclose ternary refrigerant compositions which include R32 and R125.  Figures 3 and 8 specifically disclose two ternary refrigerant compositions: R32, R125, R134a disclosed in Figure 3; and R32, R125 and R143a disclosed in Figure 8 which fall within the scope of claims 2 and 7 of the opposed application.  Further, Figs 3, 7 and 8 are also disclosures of binary mixtures of R32 and R125 and display the relative amounts of each required in a flammable or non-flammable binary mixture.  Figs 3, 7 and 8 disclose binary mixtures of R32 and R125 over a full percentage range of each compound.  Accordingly, at least claims 1-9 lack novelty in light of [the Daikin patent].  As [the Daikin patent] discloses the compositions as refrigerant compositions, at least claims 10 and 12 also lack novelty in light of the [Daikin patent]."

and it proposes to amend the particulars of the grounds of non-compliance with subsections 40(2) and 40(3) to include this paragraph:

"Claims 1-4 are not fairly based on the specification as these claims include compositions which do not meet the objects of the invention.  One of the stated objects of the invention (page 2 lines 18-22) is that the constant boiling composition of at least two fluorocarbons be non-flammable.  However, the claimed range in claim 1 of the specification covers flammable mixtures which are outside the invention.  Claims 2-4 define flammable compositions containing amounts of R32 of greater than 60%.  Figs 3, 7 and 8 of the [Daikin patent] clearly disclose the amount of R32 required in a composition to render it flammable."

REASONS FOR MAKING THE REQUEST

The reason for making the request is stated in the request as:

"The proposed amendment to the Statement of Grounds and Particulars is to insert [the Daikin patent] into the particulars under [the ground of novelty] and [the ground of non-compliance with subsections 40(2) and 40(3)] of the opposition."

The request goes on to state:

"The obtaining and identification of the pertinence of the new document arose incidental to the preparation of the opponent's evidence in the above opposition in the circumstances set out below.

We met with our expert Mr Bertrand Harrington in our offices on 22 June 1999 to discuss a draft of his declaration.  In that meeting Mr Harrington referred to a "Daikin patent" which contained triangle diagrams showing flammability of various refrigerant compositions.  After that meeting we amended his declaration and faxed it to him requesting him to review the declaration and also asked him to provide us with a copy of the "Daikin patent" which contained those diagrams in order that we could review it.

Mr Harrington mailed the amendments to the final version of his declaration to us with a copy of the Australian patent 641740 (the "Daikin patent") which we received in our offices on 28 July 1999 (although the relevant attorney did not receive it until 29 July 1999).

Over the days of 3 and 4 August 1999 a final draft of the declaration was prepared incorporating Mr Harrington's final comments and we reviewed the diagrams in the Daikin patent.  We noticed the diagrams disclosed ternary refrigerant compositions - in particular Figures 3, 7 and 8 including compounds HFC-32 and HFC-125 which are the subject of the opposed application.  The diagrams disclosed the relative amounts of the components required for a flammable or non flammable composition.  In reviewing the body of the Daikin patent we noted a particular reference at the last line of page 5 - line 3 of page 6 which specifically refers to two component (binary) mixture refrigerants - which is the subject of at least claim 1 of the opposed patent application.  On the 4 August 1999, we faxed the final draft of the declaration together with a copy of the Daikin patent to our client in the UK together with our comments that Mr Harrington's declaration would need to be slightly further amended to include comments on the patent.  On 5 August we mailed Mr Harrington his original copy of the patent specification and requested he contact us immediately regarding the inclusion in his declaration of comments relating to it."

The request then sets forth a number of arguments in support of the amendment.  I will provide details below of those submissions, as well as those made at the hearing, when setting out my decision.

EVIDENCE

The response of Du Pont to the request to amend the statement of grounds and particulars was to object to the amendment and request of Elf as follows:

"We request the attorney for Spruson and Ferguson handling this matter provide a Statutory Declaration to support comments detailed in their letter of 9 August 1999.  We also request a Statutory Declaration from the Opponent's expert Mr B. Harrington confirming as to when he first became aware of the Daikin 641740 (formerly 74076/91) case.  It is alleged by Spruson and Ferguson in their 9 August 1999 letter that this took place only recently.  We ask Mr Harrington to declare "when".

This was followed three days later with an additional request:

"In addition to the above, we request a Statutory Declaration from Elf Atochem, attesting to when Elf Atochem first became aware of the Daikin case.  This request is made as we have correspondence from December 1993 from an Elf Atochem entity that they were contemplating joining our client in opposing Daikin's Patent No. 641740 (74076/91), which is your proposed new Document D26."

Du Pont reiterated its request on two more occasions in the period leading up to the hearing of the objection on 28 October.  On the evening before the hearing copies of two statutory declarations by Miss Irani and one by Mr Harrington were received by facsimile transmission in the Patent Office.

The Harrington declaration and one of the Irani declarations set out the circumstances leading to the discovery and realization of the importance of the Daikin patent.  The facts contained in the declarations correlate very closely with those given in the request in the passage which I have quoted above.  Mr Harrington attests that he first became aware of the Daikin patent when it was provided to him in May 1999 by another firm of patent attorneys, a fact which was later asserted by Mr Houlihan to be incorrect.

The other Irani declaration contains details of her attempts to establish from the UK agent for Elf (which is a French company) what prior knowledge the company had of the Daikin patent.  This appears to have been fruitless exercise, as Miss Irani was advised, in a response which sidestepped the issue somewhat, that

"given the lapse of time, the personnel in the patent department of the opponent had changed and no one could exactly attest as to when the opponent had first become aware of the reference."

THE RELEVANT LAW

The allowability of the present request to amend the statement of grounds and particulars is determined by regulation 5.9 of the Patent Regulations 1991.  The relevant portions of regulation 5.9 read as follows:

5.9    (1)  Subject to subregulation (2), the Commissioner, on the written request of an  opponent and subject to such terms as the Commissioner may specify:

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(c)   must amend particulars relating to a ground set out in a statement that is served and filed under subregulation 5.4(1)

(2) The Commissioner must not allow an amendment requested under subregulation (1), if:

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(e)  he or she reasonably believes that a person will be unduly prejudiced by the amendment.

A number of decisions of the Commissioner have considered the question of what constitutes undue prejudice to a person.  The basic principle is that undue prejudice occurs when an amendment is detrimental or disadvantageous to the patent applicant (although conceivably it may be some other person), and the circumstances surrounding the amendment cause the degree of that detriment to be excessive - see, for example, Diamond Scientific Company v CSL Limited (1992) AIPC 90-927. However, in making this decision I must have regard to all relevant factors, and cannot reduce the consideration to imperative compliance with an arbitrary rule - see Ferocem Pty Ltd v Commissioner of Patents, (1994) 28 IPR 243 and A Goninan & Co Ltd v Commissioner of Patents, (1997) 38 IPR 213.

DECISION

In assessing the degree of prejudice involved in this amendment, I must have regard to all relevant factors.  In the present case, the nature of the change in the case to be answered, the circumstances leading up to the identification of the new document, any delay in making the amendment and any likely protraction of the opposition are all relevant considerations.

(i) Nature of the Change

An aspect of considerable significance in this matter is that the document which it is proposed to add to the particulars of this opposition is already in the particulars of the other opposition action on this application.  As was pointed out by Miss Irani, if the applicant is forewarned of the existence of a new particular and the nature of the case against it to this extent, it would seem difficult, although not impossible, to contend that the applicant has suffered any substantial prejudice through the nature of the change.  There is support for this from previous Office decisions.  In Bac Tech (Australia) Pty Ltd v Gencor South Australia Ltd (1995) APO 54, in circumstances similar to those of the present case, the delegate of the Commissioner stated:

"In the present case I have found that there was no undue delay in filing the amendment.  The fact that the applicant is aware of the document through a co-pending opposition, and will presumably file evidence regarding the document is a relevant consideration.  Taking all the relevant factors into account, I have found that the applicant will not be unduly prejudiced."

Also, in University of Georgia Research Foundation Inc and Emory University v Biochem Pharma Inc (1998) 40 IPR 412 the delegate found that the fact that a document it was sought to add to the particulars in question was the applicant's own, and therefore known to it, outweighed the undue delay involved in that case. These cases may be distinguished from that of Stevelift Pty Ltd v Formark Pty Ltd (1994) 29 IPR 154, in which the applicant was similarly aware of a reference to be included from another co-pending application, but this was outweighed by the extent of the delay involved in filing the request to amend, it having been filed after all the evidentiary stages had been completed.

The change requested is very limited in extent, involving a new citation for the ground of novelty and for non-compliance with section 40(2) and (3).  With regard to the latter, Mr Houlihan put forward an argument that the new particular in fact introduces a new ground into the opposition - lack of utility - and this meant that the amendment in its entirety should be refused.  The wording of the new particular (see earlier) commences with the assertion that the claim lacks fair basis because it does not achieve the objects of the invention.  This would seem to have a basis in law, as, for example, in AMP v Utilux, (1971) 45 ALJR 123 at 131, where McTiernan J stated (referring to subsections of the 1952 Act):

"If……..a patentee choses or is compelled to state advantages of his invention, failure of a claim to embody any of the advantages claimed must result in the failure of the claim."

However, as it continues, this particular does seem to employ wording which would seem more at home in a particular for the ground of utility. However, whether or not Mr Houlihan is correct on this point is not something which is possible to determine in these proceedings, but rather will need to be explored in the forum of the substantive opposition. In any case, even if Mr Houlihan were to be correct in his contention that this particular goes to the ground of lack of utility, this could hardly be said to be adding a new ground to the opposition, as utility is not a ground which is available under section 59. It follows that I reject Mr Houlihan's submission that the amendment should be refused on this basis.

In Porter v Arbortech Investments Pty Ltd (1993) 31 IPR 169 it was held that if an amendment is one that is clearly determinative of the opposition, this is a relevant factor supporting the allowance of the request. In the present matter, while the Daikin patent does seem likely to be of significance to the opposition, I am not able to say at this point that it would be determinative of the opposition, notwithstanding Miss Irani's submissions to the contrary.

(ii) Manner in which new documents were identified

Mr Houlihan alleged that Elf had been on a fishing expedition for new citations to use in its opposition, and that "the opponent was now asking the Patent Office if it could help them repair a badly prepared statement of grounds and particulars".  Mr Houlihan drew attention to the lack of evidence from Elf as to what Mr Harrington's "riding instructions" were, and surmised that Mr Harrington had been told to "go fishing".  Mr Houlihan pointed to the fact that the patent attorneys for Elf had sought and obtained a copy of ICI's statement of grounds and particulars (mentioning the Daikin patent) from the Patent Office in March 1999 as evidence that Elf was actively pursuing new particulars in the opposition.

It appears that Elf has actually known of the existence of the Daikin patent since 1993, when they considered opposing the grant of a patent in respect of it.  Elf, presumably, was also aware of the Daikin patent because it had been cited in the first examiner's report on the present application.  At the hearing it also emerged that Mr Harrington had referred to the Daikin patent six times in the course of a statutory declaration he had provided in 1998 for another opposition proceeding, with the Daikin patent being an exhibit to his declaration.

What I think this all suggests is that rather than Elf being on a fishing expedition, the Daikin patent has, as it were, been floating around unrecognized for its significance by Elf (by which I also mean its patent attorneys), and it took some time for it to stumble over the significance of the Daikin patent to this opposition.  Had Elf been on a fishing expedition, I think it would have been likely to have grasped the significance of the Daikin patent much more quickly.  Mr Houlihan would contend, as I understand it, that Elf went on a fishing expedition and then committed the other sin of delaying doing anything about what it had found.  Although this is possible, I think it is unlikely.  In my view there is nothing particularly prejudicial to Du Pont in the manner in which the Daikin patent was identified.

(iii) Delay

This appeared to be Mr Houlihan's main grievance with the request to amend the statement of grounds and particulars, and I think Mr Houlihan's criticism of Elf for the rather slow-motion fashion in which Mr Harrington's evidence was compiled and the significance of the Daikin patent was ascertained is well-founded.  Mr Houlihan drew attention to the fact that this request to amend the statement of grounds and particulars has come twelve months after the original statement was filed, and noted that in Sumitomo Electric Industries Ltd v BICC Plc and Another (1993) 26 IPR 613 seven months was considered excessive. Miss Irani indicated that the delay in the present case was at least partly attributable to the indirect line of communication between Spruson & Ferguson and Elf, which is via an agent in London. However, this is clearly a circumstance within Elf's control, and does not justify the delay.

However, in mitigation of this delay it is difficult to see how the delay could be considered unduly prejudicial to Du Pont, given that Du Pont was already aware of the Daikin Patent and its significance and was facing opposition proceedings in which the relevance of that document to its application would be fully explored.

Furthermore Miss Irani contended that the relevant date from which the delay should be judged is the date on which the responsible person, being Miss Irani, first appreciated the significance of the Daikin patent as a citation.  She cited ABB Engineering Construction Pty Ltd v A Goninan & Co Limited (1998) APO 46 as follows:

"It is important to distinguish between knowledge of material and knowledge of the significance of material to a particular case.  The Porter v Arbortech Investments Pty Ltd [supra] decision supports this view.  In that case the determination of whether there was undue delay in filing the request to amend was reckoned from the time of realising the significance of a document.  In the present case, the issue to be determined is not when Goninan first knew of the [prior art] but when Goninan first realised the significance of the [prior art] to the present application."

According to Miss Irani's statutory declaration, she first realised the significance of the Daikin patent on 29 July 1999.  The request to amend the statement of grounds and particulars was filed twelve days later.  By the standards which normally obtain in these matters, that cannot be regarded as constituting any significant delay once the significance of the citation was recognized.

The other aspects of delay drawn attention to by Mr Houlihan do not, I believe, stand up to scrutiny.  That Mr Harrington did not appreciate the pertinence of the Daikin specification to the opposition is understandable, as one would expect the skills required to do so to lie more with a patent attorney than a technical expert.  I also do not see anything untoward in Mr Harrington wrongly recollecting how and when he first became aware of the Daikin patent.  The five weeks it took Mr Harrington to forward a copy of the Daikin patent to Sprusons & Ferguson is reasonably understandable if one takes into account, firstly, that Mr Harrington did not understand, and was unable to convey to Miss Irani, its importance and, secondly, that providing a copy of the Daikin patent was only secondary to the main task before him of providing a statutory declaration.  Less fathomable, though, is the fact that Spruson & Ferguson did not simply ask him to quote the patent number.

Finally Mr Houlihan drew attention to the protraction of the opposition proceedings he alleged would be caused by filing the request to amend the statement of grounds and particulars.  Immediately Du Pont had filed its objection to the amendment, they had sought to have a hearing set down for eleven days later and the statutory ten days notice of the hearing given to the other party.  This urgency was because Mr Houlihan was going overseas a few days after the date for which he was requesting a hearing, and would not be back until mid-October.  Elf's attorneys indicated they could not accommodate the timing of the hearing sought by Du Pont, as they had to obtain instructions from their clients, and the time was too short to enable them to prepare for the hearing.  This led to the hearing being set down for 28 October 1999, the date on which it was ultimately held.

At the hearing Mr Houlihan noted that the declaration from Mr Harrington was dated 26 August 1999.  Also, the evidence establishes that Miss Irani had a draft declaration prepared at around that time.  Mr Houlihan queried why these could not have been filed then, rather than, as happened, on the eve of the hearing, particularly as the evidence also establishes that by that time the intention had been formed by Miss Irani and Elf not to file the evidence from Elf itself that Mr Houlihan had requested.

I think that, at least in the case of the Harrington declaration, Du Pont have some cause for complaint over Elf's belated filing of evidence in this matter.  However, I think that is more properly taken account of when determining costs.  So far as any delay occasioned by the process of hearing and determining this matter is concerned, that has been largely in the hands of Du Pont.

In any case, the question of protraction of the case as a result of the amendment is really a prospective one of what protraction of the case will occur if I allow the amendment.  As noted by Miss Irani, the request was filed some three weeks before the completion of evidence in support in this opposition, and the applicant has full opportunity to prepare its evidence in answer and address the significance of the reference.  Miss Irani cited three Patent Office decisions (University of Georgia Research Foundation Inc v Biochem Pharma Inc (supra), Abundant Lawn Grass Industries v Crancove Pty Ltd (1993) AIPC 90-973, Colgate-Palmolive v Westone Products Pty Limited (1997) 38 IPR 437 at 445) as precedent for the approach that, as the period for serving evidence in answer did not commence until after the date of filing of the request, then therefore the applicant is not disadvantaged to the extent that any time is lost to gather and prepare the evidence in answer. I agree, and thus I do not see the allowing of the amendment as leading to a protraction of the opposition prejudicial to the applicant.

Weighing all these factors, in my view this amendment is one which is clearly not unduly prejudicial to the applicant.  I allow the amendment to the statement of grounds and particulars.

The time for serving evidence in answer in this opposition shall be three months from the date of this decision, not taking into account any extensions of time which may be granted.  At the hearing the applicant requested that the date for serving evidence in answer in the other opposition to this application (that by ICI) be made the same as this opposition.  That, in effect, would involve an extension of time to serve evidence in answer in the ICI opposition.  That would be outside the scope of these proceedings, and would need to be considered on its merits.  In any case, once the two oppositions were synchronised in this fashion, there is no guarantee that they would stay that way.

COSTS

It is a general principle that costs follow the event.  However in this case in my view had Elf have acted with more urgency in filing its evidence in support of its request to amend its statement of grounds and particulars there are indications that this matter may not have been taken to a hearing and a decision.  Weighed against is the fact that I consider Du Pont's objection to the amendment was clearly unsustainable from the outset.  In light of both these circumstances I have decided to make an award one half of Elf Atochem S.A.'s costs against E I Du Pont De Nemours and Company.

E J Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :    Callinan Lawrie, Melbourne

Patent attorneys for the opponent   :    Spruson & Ferguson, Sydney