Eigen Technology Pty Ltd v CTA Australia Pty Ltd - [2022] APO 44

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Eigen Technology Pty Ltd v CTA Australia Pty Ltd [2022] APO 44
Patent:2008202373

Title:Tactile ground surface indicator

Patentee:CTA Australia Pty Ltd

Opponent:Eigen Technology Pty Ltd

Delegate:Benjamin Norman

Decision Date: 30 June 2022

Hearing Date: Written submissions filed on 28 July 2021

Catchwords: PATENTS - request under sub regulation 5.17 - request for dismissal of opposition to grant of leave to amend – Section 102(1) – opposition to proceed

Representation: Patent attorney for the applicant: Davies Collison Cave Pty Ltd
Patent attorney for the opponent: Churchill Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent:2008202373

Title:Tactile ground surface indicator

Patentee:CTA Australia Pty Ltd
Date of Decision: 30 June 2022
DECISION

I will not dismiss the opposition to section 104 amendments. I direct the opposition to section 104 amendments proceed, and award costs according to Schedule 8 of the Patent Regulations against CTA Australia Pty Ltd.
REASONS FOR DECISION

AU 2008202373 is an Australian patent (the patent) accepted on 13 July 2009 and granted on 19 November 2009 in the name of CTA Australia Pty Ltd (the patentee). The patent claims priority from provisional patent applications AU2007903648 and AU2007906297.
Following grant, the patent has been subject to several actions in its lifetime. The first amendments to the patent were allowed and advertised on 02 December 2010.
On 26 June 2015 the Commissioner received a letter dated 23 June 2015 that the application was the subject of Federal court proceedings, case VID317/2015.
On 8 March 2017 the Commissioner received a request for re-examination from Roger Syn & Co. This concluded on 06 July 2017 after three re-examination reports without any proposed amendment.
On 21 May 2018 the Commissioner received another request for re-examination, this time by Churchill Attorneys on behalf of Eigen Technology Pty Ltd (the opponent), This concluded 21 January 2019 after three re-examination reports without any proposed amendment.
On 22 August 2019 the Commissioner received another request for re-examination, again by Churchill Attorneys on behalf of the opponent. In response to the second re-examination report, the patentee filed amendments on 23 June 2020. After a discussion with the Supervising Examiner responsible for re-examination of the patent, the patentee filed new amendments (the proposed amendments) on 11 November 2020. These amendments were considered allowable by an examiner and leave to amend was advertised on 7 January 2021.
On the 14 January 2021 the opponent filed their notice of opposition to the amendments. A Statement of Grounds and Particulars (the SGP) was filed on the 9 February 2021 which includes three Grounds and the particulars in relation to each of these grounds.
The patentee filed a Request for Dismissal of the Opposition on 17 February 2021. A delegate of Commissioner wrote to the parties on 25 February 2021 intending to dismiss grounds 2 and 3 in their entirety and some of the particulars relating to ground 1 of the opposition, and providing an opportunity to comment.
Both parties provided comments, and the delegate wrote again on 23 March 2021 advising that ground 2 in its entirety and part of ground 1 has been dismissed and maintaining her intention to dismiss ground 3 in its entirety and providing an opportunity to comment.
Both parties provided comments again, and the delegate wrote again on 22 April 2021 advising that ground 3 has been dismissed in its entirety and maintaining her intention to not dismiss the other particulars of ground 1 and providing the parties an opportunity to be heard in this matter.
The patentee wrote to the Commissioner on 06 May 2021 requesting to be heard regarding the delegate’s intention to dismiss only some of the particulars in relation to ground 1.
On 2 July 2022, the parties were directed to provide submissions, each being given two weeks to provide submissions in support, and subsequently one week to provide submissions in answer.
The patentee filed their submissions on 16 July 2021, and the Opponent filed their submissions on 14 July 2021.
As the patentee had issues with accessing the opponent’s submission, the delegate wrote to the parties extending the deadline for submission in response until 28 July 2021.
The opponent provided their submissions in response on 26 July 2021, but also elected to withdraw the submissions in support. The patentee provided submission in response on 28 July 2021.
The Specification.
The present matter deals with the specification as proposed to be amended on 11 November 2020.
The patent is directed towards tactile ground indicators, devices installed in the ground to assist visually impaired individuals in identifying changes in the ground’s surface. In particularly, the specification is directed at a method of installing a particular style of indicator, the projecting stems of the indicators are encased with a plastic tube. Figure 1 neatly depicts the general function of the present invention.
A tactile ground surface indicator 1 comprises a moulded body portion with an indicator portion 5 arranged to be placed above the ground surface. A generally elongate casing 9 engages over the stem 7 of the ground surface indicator, the casing generally being made from a deformable plastic. The casing and ground surface indicator are inserted into the ground with a biasing of the casing against a ground cavity assisting in the retention of the indictor in the ground. It is this general operation that is relevant to the present matter.
The Proposed Amendments.
The proposed amendments to the specification are directed to both the description and the claims.
Claim 1 as proposed to be amended is as follows, marked up in comparison to the specification as previously amended:
A tactile ground surface indicator, comprising a rigid indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a rigid projecting portion extending from a base of the indicator portion, in fixed relation to the indicator portion, to be receivable in a cavity formed in the ground, the indicator further comprising a casing applied to the projecting portion, thereby substantially encasing it, prior to receipt ~~thereof~~ of the projecting portion in the cavity, the casing being deformable against a wall of the cavity, upon insertion of the projecting portion and casing into the cavity, to retain the indicator.
Previous claim 19 as proposed is now claim 23 and is as follows, marked up in comparison to the specification as previously amended:
A method of forming a tactile ground surface indicator, the method comprising:
providing a rigid body comprising an indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a projecting portion extending from a base of the indicator portion to be receivable in a cavity formed in the ground; and ~~prior to receipt of the projecting portion in the cavity,~~ applying a casing to the projecting portion such that the projecting portion is substantially encased thereby,prior to receipt of the projecting portion in the cavity, the casing being deformable against a wall of the cavity upon insertion of the projecting portion and casing into the cavity, to retain the indicator.
The proposed amendments also add several new independent claims, Claim 2:
A tactile ground surface indicator, comprising a rigid indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a rigid projecting portion extending from a base of the indicator portion, in fixed relation to the indicator portion, to be receivable in a cavity formed in the ground, the indicator further comprising a casing pre-applied to the projecting portion such that, during insertion of the projecting portion into the cavity, downward movement of the projecting portion relative to the casing is substantially precluded and the casing deforms against a wall of the cavity to retain the indicator.
New independent Claim 3 reads:
A tactile ground surface indicator, comprising a rigid indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a rigid projecting portion extending from a base of the indicator portion, in fixed relation to the indicator portion, to be receivable in a cavity formed in the ground, the indicator further comprising a casing pre-applied to the projecting portion, whereby an upper end of the casing is received over an upper part of the projecting portion, such that during insertion of the projecting portion into the cavity, the casing deforms against a wall of the cavity to retain the indicator.
New independent Claim 24 reads:
A method of forming a tactile ground surface indicator, the method comprising:
providing a rigid body comprising an indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a projecting portion extending from a base of the indicator portion to be receivable in a cavity formed in the ground; and pre-applying a casing to the projecting portion, such that during insertion of the projecting portion into the cavity, downward movement of the projecting portion relative to the casing is substantially precluded and the casing deforms against a wall of the cavity to retain the indicator.
New independent Claim 25 reads:
A method of forming a tactile ground surface indicator, the method comprising:
providing a rigid body comprising an indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a projecting portion extending from a base of the indicator portion to be receivable in a cavity formed in the ground; and pre-applying a casing to the projecting portion, whereby an upper end of the casing is received over an upper part of the projecting portion, such that during insertion of the projecting portion into the cavity, the casing deforms against a wall of the cavity to retain the indicator.
Relevant Law
The examination and grant of this patent occurred before 15 April 2013. Therefore, the amendments to section 40 by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) do not apply.
Dismissal of an opposition is provided for in regulation 5.17. The basic principle that governs dismissal of an opposition was set out in Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 (Servier): an opposition may be dismissed if it is considered to have no reasonable prospects of success.
It is worth bearing in mind what the delegate said in the Servier decision:
"This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established."
The circumstances in which the Commissioner will dismiss an opposition are well established: "whether there are prospects of success that are real and not fanciful or merely arguable" (Re Preference Manufacturing (Aust) Pty Ltd and Commissioner of Patents [2012] AATA 393, 129 ALD 322 at [14]).
The Commissioner can dismiss the opposition in its entirety or can dismiss a particular ground (or grounds) (L'Air Liquide, SA pour L'Etude et L'Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd [1992] APO 1, 24 IPR 27).
The question of when an opposition has no reasonable prospects of success is determined by considering the statement of grounds and particulars, which briefly outlines and circumscribes the case for the opponent. The statement identifies the material facts necessary for the particular grounds of opposition (see Mobay Corporation v The Dow Chemical Company [1992] APO 25; (1992) 24 IPR 379).
The following principles were neatly summarised by the delegate at [18] in Servier:
·     An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.
·     In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than a fanciful issue to be decided. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident. This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.
·     A dismissal will generally be inappropriate where expert evidence is required to determine an issue. However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.
·     Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success. However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed. If no particulars have been provided in relation to a ground of opposition, then it may be considered to have no reasonable prospects of success.
·     Care must be taken not to cause an injustice to a party by dismissing an opposition.
The Grounds of the Opposition.
The Statement of Grounds and Particular as originally filed included:
·     Ground 1: S 102(1) of the Act
·     Ground 2: S 102(2)(a) of the Act
·     Ground 3: S102(2)(b) of the Act
I summarise ground 1 to be particularised as follows (which I have prefixed with my own integers):
a)   The amendment of Claim 1 & 23 to require the casing to be applied to the projecting portion “thereby substantially encasing it” is directed to matter that is not in substance disclosed in the application as filed. The amendment of Claim 1 and 23 adding the term “substantially” imports some degree or extent to which the projecting portion is encased by the casing. The possibility that the projecting portion is not completely encased by the casing is directed to matter that is not in substance disclosed in the application as filed.
b)   The amendment of Claim 1 and 23 to require the projecting portion to be substantially encased “prior to receipt of the projecting portion in the cavity” is not in substance disclosed in the specification as filed.
c)   The amendment of Claim 2 and 24 to require that the casing is “pre-applied to the projecting portion such that, during insertion of the projecting portion into the cavity, downward movement of the projecting portion relative to the casing is substantially precluded and the casing deforms against a wall of the cavity to retain the indicator”. is not in substance disclosed in the specification as filed.
d)   The amendment of Claim 3 and 25 to require the indicator to further comprise “a casing pre-applied to the projecting portion, whereby an upper end of the casing is received over an upper part of the projecting portion, such that during insertion of the projecting portion into the cavity, the casing deforms against a wall of the cavity to retain the indicator” is not in substance disclosed in the specification as filed.
e)   The amendment of Claims 21 and 22, when appended to any of claims 1-3, is not in substance disclosed in the specification as filed for reasons above.
f)   The amendment of Claims 26 and 27, when appended to any of claims 23-25, is not in substance disclosed in the specification as filed for reasons above.
On the 23 March 2021, a delegate of the Commissioner wrote to the parties to formally dismiss Ground 1 insofar as it relates to the feature of the projecting portion to be substantially encased prior to receipt of the projecting portion in the cavity in the amended claims (1b, 1c, 1d above) and Ground 2 in its entirety.
On the 22 April, a delegate of the Commissioner wrote to the parties to formally dismiss Ground 3 in its entirety.
Outstanding Issues
The delegate of the Commissioner informed the parties that all grounds barring that related to the first particular under the first ground under s102 were dismissed. The Opponent expressed that they would make no submissions regarding this dismissal.
The matter to be heard is whether the ground of s102(1) should be dismissed. In particular it is before me to decide whether the inclusion of the feature related to “substantially encasing” fails under s102(1) of the Patents Act as it stood prior to 15 April 2013 in that it would be an amendment that would provide for claimed matter that was not in substance disclosed in the specification as filed. Both parties have made submissions regarding this.
Summary of Submissions
The opponent’s submissions are directed to the introduction of the qualifier “substantially” with respect to encasing the projection portion, and that this amendment introduces an ‘intermediate generalization’ that was not present before the amendment. The opponent further submits that there is no real and reasonable clear disclosure that the project portion can be ‘mostly but not completely’ encased in the original specification. They argue that the specification only discloses complete encasement as per Figure 1C, or no encasement at all, and that there is no disclosure whatsoever of an embodiment that represents some kind of immediate position where a casing is only partially applied between the two extremes.
The patentee submits that:
“The assessment of whether claimed matter is in substance disclosed is not one of whether the claim language embraces something broader than is specifically disclosed; the question is whether, consistent with the test for fair basis, there is ‘a real and reasonably clear disclosure’ of the claim as proposed to be amended when compared against the original disclosure.”
I understand the general thrust of this position and the patentee’s submissions to be that the concept of substantial encasement is naturally fairly based because of the common use and construction of the word “substantial” in a patent specification. They also argued that “there is no lack of fair basis resulting from the introduction into the claims of the phrases ‘substantially encasing it’ and ‘substantially encased thereby’, as reflected by the dismissal of Ground 3.”
The patentee also submits:
“There is, at any rate, a disclosure in the original specification of the projecting portion being mostly but not completely enclosed, and in this regard we would direct attention to the paragraphs and drawings therein that are reproduced below [reference is made to figures present in the specification as filed].”
Consideration
The relevant amendment clearly adds a new feature to the claim. Ultimately, it is necessary that this feature be considered to determine if it adds material not in substance disclosed in the specification as filed. As a preliminary matter I agree with the opponent in that the specification as filed prima facie, only expressly discloses (by graphical depiction) the situation whereby the casing completely encases the projecting portion, along with the situation of no encasement. Figures 1C and 1D above show this notional “complete” encasement. While the patentee makes reference to some figures in the specification as filed, I note none of these figures show a casing that is in use, encasing the projection in a manner that does not reach the top of the projecting portion with the casing appearing to abut the above ground portion of the indicator. Thus, on the express disclosures of the specification it is not immediately apparent as to what a person skilled in the art would construe these disclosures to include.

It is the case that in practice, in determining whether as a result of amendment a claim of the specification claims matter “in substance disclosed”, the test for fair basis of a claim can be employed, i.e. the amended claim in effect must also be fairly based on the specification as filed. Thus, there must be “a real and reasonably clear disclosure” of the claim as proposed to be amended when compared against the original disclosure (Burchett J in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353, accepting the principle of "a real and reasonably clear disclosure" set out in CCom Pty Ltd v Jiejing Pty Ltd 28 IPR 481). Whether there is a real and reasonably clear disclosure of the claim when set against the original disclosure inevitably requires the consideration of the scope of the claim and the original disclosure. In this context the issues turn on a construction of the word “substantially”, which is common in patent drafting.
Again referring to the Patent Examiner’s Manual of Practice and Procedure it is noted that the word ‘substantially’ is frequently used in claims and is permissible provided it conveys the necessary meaning (Leonardis v Sartas [1996] 449 FCA 1). ‘Substantially’ merely indicates an intention that the term it qualifies should not be read too literally. As explained by Blanco White, Fifth Edition, at 2-112:
“If draftsmen and judges were perfect ‘substantially’ would have no effect; as it is, the indication is often a useful one. But the word can only mean ‘nearly enough for the patentee's purposes’, unhelpfully unless the body of the specification tells the reader what those purposes are and what sort of precision is needed to achieve them.”
Thus, the scope of the relevant term is to be considered with respect to the specification read through the eyes of the skilled addressee. In the present situation, with no express statement as to the potential for non-complete encasement of the projecting portion in the specification as filed, it appears to me that there is a material consideration that needs to be given to the allowability of the amendments. To this extent, it appears at least reasonable to argue that the inclusion of the feature introduces a concept that is not disclosed by the original specification. Of course, this may ultimately prove an untenable argument, but it does not appear that such a conclusion can be reached without any depth of analysis.
I do not consider there to be a need to deal with the alleging of the added feature to relate to an intermediate generalisation. This is primarily due to the fact that such consideration is one of deeper analysis extending beyond the prima facie nature of the issue at hand. I also take this opportunity to address the patentee’s submission as to there being an inconsistency in the face of dismissal of a fair basis particular under ground 3. Suffice to say that ground 3 depends on the specification as proposed to be amended, and it is the case that the feature of substantial encasement was included in consistory statements of the specification as proposed to be amended, thus prima facie achieving fair basing.
Thus, I consider that the amendment to claims 1 and 23 is not a matter of adding a new feature to the claims, which could plainly be affirmed or dismissed from the face of the specification alone. Instead, the amendment is potentially directed to changing the scope of an existing feature. Whether this feature, as proposed to be claimed, is disclosed in the original specification requires a deeper analysis as to whether this was disclosed to a skilled addressee reading the original specification.
In light of the above, I consider there remains a prima facie case to answer with respect to the remaining particulars of Ground 1. Unless I perform an in-depth analysis of claim 1 and 23 and the specification as filed, I am unable resolve whether the feature of “thereby substantially encasing it” is in substance disclosed in the application as filed.
It follows that I am not satisfied that it is appropriate to dismiss ground 1.
Costs
I see no circumstance that would justify departing from the normal practice that costs should follow the event. I therefore award costs against the patentee.
B.Norman
Delegate of the Commissioner of Patents