Ericsson Australia Pty Ltd v Aussie L.L.C. Pty Ltd - [2004] APO 13

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No 697560 in the name of Aussie L.L.C. Pty Ltd

Title: Improvements Relating to Mobile Phones

Action: Final determination in an opposition by Ericsson Australia Pty Ltd under s 59 of the Patents Act 1990

Decision: Issued 09 June 2004.
Abstract

Final determination.

In his decision on the substantive opposition, the delegate found that claim 1 was not novel or inventive. The applicant filed amendments to replace claim 1 with new claims 1 to 4. It was found that these claims also lacked novelty or an inventive step.

The proposed amendments were a genuine attempt to satisfy the delegate's decision and as there was clearly patentable subject matter disclosed in the application, the applicant was given a further opportunity to propose suitable amendments.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No. 697560 by Aussie L.L.C. Pty Ltd and opposition under Section 59 of the Patents Act 1990 by Ericsson Australia Pty Ltd.

BACKGROUND

Patent application 697560 in the name of Aussie L.L.C. Pty Ltd (hereinafter referred to as Aussie) was filed on 13 December 1996 by Newcom Technologies Pty Ltd (Newcom). The patent derives priority from provisional application PN7551, which was filed on 15 January 1996. The patent application was advertised accepted on 8 October 1998, and assigned to Aussie on 3 July 2001.

Ericsson Australia Pty Ltd (hereinafter referred to as Ericsson) filed notice of opposition to the grant of a patent on 8 January 1999. The parties were heard in relation to the substantive opposition in Canberra on 25 February 2003. In a decision dated 2 May 2003 (Aussie LLC Pty Ltd v Ericsson Australia Pty Ltd [2003] APO 20, which I will refer to as the earlier decision), it was found that claim 1 lacked novelty and inventive step. The applicant was allowed 60 days in which to propose amendments to overcome these deficiencies.

On 16 June 2003, Aussie requested leave to amend patent application 697560. Those amendments were found to comply with Section 102 of the Patents Act 1990 and were allowed unopposed on 27 January 2004.

Ericsson sought to be heard on the matter of final determination and to this end a hearing was held in Canberra on 18 March 2004. Mr Peter Franke, patent attorney of the firm Watermark, Sydney, assisted by Mr Simon Ellis, also of that firm, represented the opponent. The applicant had indicated previously that it did not wish to be heard but would rely on written submissions filed previously on 17 February 2004.

THE NATURE OF THE AMENDMENTS

For the sake of brevity I will refer to the claims as accepted as the old claims and the claims as subsequently amended as the new claims.

The amended specification ends with thirteen claims. The applicant has added four new claims to replace former claim 1. New claim 1, with differences from old claim 1 underlined,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Ericsson Australia Pty Ltd v Aussie L.L.C. Pty Ltd

Details

AGLC: Ericsson Australia Pty Ltd v Aussie L.L.C. Pty Ltd [2004] APO 13
Case: [2004] APO 13
Decision Date: 9 June 2004

CaseChat Overview and Summary

The Delegate of the Commissioner of Patents, Mr. R. W. J. Finzi, presided over the opposition between Aussie L.L.C. Pty Ltd, the patent applicant, and Ericsson Australia Pty Ltd, the opponent. The dispute revolved around the validity of claims in Aussie's patent application 697560, which related to improvements in mobile phones. Ericsson opposed the grant of the patent, and the Delegate found that the initial claims lacked novelty and inventiveness. Aussie subsequently filed amendments to replace the original claims with new ones, but these too were found to be deficient. The Delegate had to determine whether Aussie could be granted a further opportunity to amend the patent claims.

The primary legal issues centered on whether the new claims introduced by Aussie were novel and inventive over the prior art, particularly in light of three cited references: Nokia's EP 586 081, Weiner's US 4677653, and Casio's EP 690645. Additionally, the Delegate had to consider whether Aussie's amendments constituted a genuine attempt to address the deficiencies identified in the earlier decision and whether Aussie should be granted another opportunity to propose suitable amendments.

The Delegate concluded that the new claims 3 and 4 were not novel due to the disclosure in the Nokia reference. Furthermore, the Delegate found that claims 1 to 4 were not inventive in light of Nokia, combined with common general knowledge at the priority date. While the Delegate acknowledged that new claims 5 to 12 disclosed patentable subject matter, Aussie had not yet amended the specification to focus on these claims. The Delegate considered the amendments a genuine attempt to satisfy the earlier decision and decided to give Aussie 14 days to propose suitable amendments. If no amendments were proposed, the Commissioner could set the application for a hearing with a view to refusal. The Delegate awarded costs to Ericsson, the successful party in the opposition.

In summary, the Delegate found that Aussie's proposed amendments were a genuine attempt to address the earlier decision's deficiencies. However, the new claims were still not novel or inventive over the prior art. Aussie was granted a limited period to propose suitable amendments, but if no suitable amendments were presented, the Commissioner could refuse the application.

Orders