FMC Corporation v Hunter Engineering Company
[1991] APO 42
•20 September 1991
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Application No 581665 by FMC CORPORATION and an Application for Extension of Time under Regulation 57 of the Patents Act 1952 by HUNTER ENGINEERING COMPANY
Background
Application No 581665 by FMC CORPORATION (FMC), which is entitled "Vehicle Wheel Alignment Apparatus and Method", was advertised accepted in the Official Journal dated 2 March 1989. Hunter Engineering Company (HUNTER) lodged a notice of opposition under section 59 of the Patents Act 1952 and served its evidence-in-support. FMC was granted an extension of time to 2 July 1990 to serve its evidence-in-answer. FMC served some of its evidence on 14 May 1990. In a letter filed on 5 July 1990 FMC's attorneys stated no more evidence-in-answer would be served. The Office advised HUNTER of this in a letter dated 6 July 1990. Thus HUNTER's evidence-in-reply was due to be served by 6 October 1990. On 2 October 1990 HUNTER applied for an extension of time to 2 January 1991 in which to serve its evidence-in-reply. FMC objected to the application for extension of time consequently the matter was set down to be heard in Canberra on 23 November 1990. Before the date of the hearing FMC's patent attorney, Mr S. Wilson of Griffith Hack & Co, filed a letter dated 23 October 1990 which stated it did not wish to attend the hearing. On 21 November 1990 Mr A. Tatlock, patent attorney, filed a letter dated 21 November 1990 on behalf of HUNTER's patent attorney Thomson Pizzey. This letter reads in part as follows:
"Mr Thomson who has been handling this matter is presently in hospital and the writer, who is looking into Mr Thomson's urgent matters has not had an opportunity to consider this opposition.
We have today faxed Mr Wilson, the Attorney for the applicant, to ask whether in the circumstances, his client is prepared to consent to the allowance of the extension. A copy of that fax is enclosed."
Attached to Mr Tatlock's letter is a copy of a letter addressed to Mr Wilson dated 21 November 1990. I contacted Mr Tatlock's office by telephone on the morning of 23 November 1990 and I was told Mr Tatlock would not attend the hearing. Mr Wilson, in a letter dated 5 December 1990, states FMC wishes to maintain its objection to the application for extension of time.
Application for extension of time
HUNTER's application for an extension of time to serve evidence-in-reply states the circumstances and grounds as follows:
"Evidence-in-Answer of the opposition is under consideration. Further time is required to complete consideration of that evidence and formulate and serve Evidence-in-Reply."
Submissions
Mr Tatlock in his letter to the Office dated 21 November 1990 states as follows:
"we seek you (sic) indulgence in allowing the extension sought so that the matter can be considered and, if necessary, the required evidence be prepared and served."
In his letter to Mr Wilson dated 21 November 1990 Mr Tatlock states
as follows:
"I have not looked at the merits of this opposition and whether or not evidence in reply is appropriate but would be obliged if you could seek instructions to agree to the presently sought extension on the basis that if evidence is to be served I shall make every endeavour to serve this within the present period."
The main points made by Mr Wilson, in his letter dated 23 October 1990, in objecting to the application for extension of time can be summarised as follows:
HUNTER was aware of FMC's cordless aligner head at the time the notice of opposition was filed because one was shown at a trade show in California in 1985.
HUNTER did not serve any plausible evidence-in-support of its opposition. It is now merely delaying the opposition proceedings by seeking an extension of time.
HUNTER should have been aware of the disclosures in application No 581665 from the disclosures in the equivalent US and CA patent applications which were available to HUNTER in 1988.
The application for extension of time should not be allowed because HUNTER's evidence is not relevant to the present claims.
Decision
The law regarding this class of extension has been comprehensively reviewed by the Federal Court in Vangedal-Nielsen v Smith and Gelphen Nominees (1980) 33 ALR 144 and in Lyons v Registrar of Trade Marks 1 IPR 416; in addition there are many Office decisions dealing with such extensions, quite a few of which are published in the Butterworth Industrial Property Reports (IPR) and in the CCH publication, Austrlaian Industrial & Intellectual Property (AIPC). This law can be stated simply as follows:
(i)The Commissioner, before allowing the extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension;
The Commissioner must consider not only the private interests of applicants for patents, and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.
Mr Wilson did not explain why the cordless aligner head which was shown at a trade show in California was relevent to the present opposition. For example I do not think it is clear that the cordless aligner head falls within the scope of the claims in application No 581665. Therefore I consider Mr Wilson's submission which I summarised in paragraph 1 above is not relevant to the present application for extension. The evidence-in-support served by HUNTER may indicate whether it is mounting a serious opposition (for example see Hitachi Ltd v Hoover (Aust) Pty Ltd (1990) AIPC
90-711 at page 36,572). I think the evidence-in-support is prima facie relevant to the present claims. Mr Wilson's assertion that HUNTER is merely delaying the opposition proceedings by seeking an extension of time is not supported by any evidence on the file of application No 581665. Thus I do not agree with the submissions summarised in paragraphs 2 and 4 above. I also consider the submission in paragraph 3 is not relevant to the present application for extension of time. HUNTER did not know what there was to oppose in the present specification until application No 581665 had been accepted.
The circumstances and grounds given in HUNTER's application for extension of time do not explain why it has been unable to consider the evidence-in-answer and serve evidence-in-reply within the time presently allowed. The letter from HUNTER's
patent attorneys which accompanied the application also does not explain why HUNTER needs an extension of time. Mr Tatlock's letter to the Office dated 21 November 1990 merely asks for the Commissioner's indulgence in allowing the extension of time if FMC does not consent to the extension. Mt Tatlock, in his letter to Mr Wilson dated 21 November 1990, states he will endeavour to serve the evidence-in-reply within the period sought in the present application for extension of time. I note that HUNTER has not filed any evidence-in-reply nor has it filed another application for extension of time. I also note that in a telephone conversation on 21 February 1991 Mr Tatlock said it was unlikely HUNTER would serve any evidence-in-reply.
HUNTER was allowed an extension of time to serve its evidence-in-support because it needed more time to find a declarant who knew what was the common general knowledge in the art in Australia. I note HUNTER's evidence-in-support does not include a declaration about the common general knowledge in the art in Australia. FMC's evidence-in-answer criticises the documents cited in HUNTER's evidence. Thus it seems to me HUNTER may now wish to serve a declaration about common general knowledge in the art in its evidence-in-reply. Consequently HUNTER may need more time to find a declarant able to declare to what was common general knowledge in the art in Australia. In my view such evidence constitutes further evidence rather than evidence-in-reply. Thus I think the time required to serve such evidence is not relevant to an extension of time to serve evidence-in-reply.
Returning to the evidence-in-answer served by FMC I note it consists of two similar 3 page affidavits. It seems to me these
affidavits do not contain much evidence of a technical nature. In my opinion the most relevant parts of these affidavits is the criticism of the documents cited in HUNTER's evidence-in-support which I mentioned above. In this case I consider it would require little effort to consider these short non-technical affidavits. I also consider it should have been possible for HUNTER to quickly prepare evidence which was properly in reply to these affidavits. HUNTER has not placed any evidence before me which explains why it was unable to complete these tasks within the time allowed. HUNTER has not attempted to file its evidence-in-reply within the period sought in the present application. Nor, as far as I am aware, has it served any evidence since then. And, according to Mr Tatlock, HUNTER is unlikely to serve evidence-in-reply. Thus I am satisfied HUNTER has not made out a proper case justifying why it was unable to serve its evidence-in-reply within the time allowed. Therefore I could refuse to allow an extension of time. But it seems to me I should consider whether I have applied procedural fairness to HUNTER in the present circumstances. In my view the relevant circumstances are the inability of Mr Thomson to attend the hearing because he was in hospital. And the fact that Mr Tatlock then had to take over the prosecution of HUNTER's opposition.
According to the High Court an essential ingredient of procedural fairness is the opportunity to present a case (Kioa v West 159 CLR 550 at page 615). In the present context this means considering whether HUNTER was denied the opportunity of presenting its case by the circumstances I described above. The hearing officer in an earlier decision pointed out an application for extension of time should contain a concise statement of the material
facts on which the applicant wishes to rely (Commonwealth Scientific and Industrial Research Organisation v Western Mining Corp Ltd 13 IPR 424 at page 429). Thus HUNTER should have clearly stated the reasons it needed more time in its application for the extension. Instead HUNTER chose to merely ask for more time. When it did this it seems to me HUNTER should have known the Commissioner may have had to consider the application solely on the basis of the reasons given in the application (Gerber Scientific Products Inc v L. Vogel and Sons Pty Ltd 19 IPR 92 at page 98). If, for example, FMC did not oppose the application for extension of time. I think the evidence on file suggests Mr Thomson may have been too ill to prosecute HUNTER's opposition some time before 21 November 1990. But I consider there is no evidence on file which suggests HUNTER and its patent attorney were unable to properly consider and explain the reasons for the extension of time before the application was filed. Therefore I consider HUNTER had an adequate opportunity to provide a concise statement of material facts on which it wished to rely in the application for extension.
I can understand Mr Tatlock may not have wished to attend the hearing at short notice when Mr Thomson became ill. But I think HUNTER missed two opportunities for filing written submissions before the date of the hearing. For example HUNTER may have included written submissions in the letter filed with the application for extension. Or Mr Tatlock could have included more extensive written submissions in his letter to the Office filed on
21 November 1990. In the present situation I may have considered written submissions filed after the date of the hearing. But HUNTER
has not filed any written submissions since the date of the hearing. According to the Administrative Appeals Tribunal, common law does not impose upon me the task of ensuring HUNTER takes the best advantage of the opportunity to which it is entitled provided it is given a reasonable opportunity to present its case (Sullivan v Department of Transport 20 ALR 323 at page 343). HUNTER has not requested an opportunity to file written submissions. Nor, to the present date, has it filed written submissions other than those I quoted earlier in this decision. But, in my view, both Mr Thomson and Mr Tatlock should have known the Commissioner can consider written, as well as oral, submissions in this kind of action (for example see Hitachi Ltd v Hoover Pty Ltd, supra). Thus I consider HUNTER has had a reasonable opportunity to present its case even if it has not taken best advantage of this opportunity. The Federal Court considers I will also apply procedural fairness if I do no more than fully consider the evidence supporting the application for extension of time which is actually before me at the time I make my decision (Singh v Minister for Immigration and Ethnic Affairs 9 ALN 13 at page 15). I think I have fully considered the evidence which HUNTER filed in support of its application for extension of time earlier in this decision. Thus I consider I have applied procedural fairness to HUNTER's application for extension of time. Therefore it follows from what I found earlier in this decision that I am satisfied I should refuse HUNTER's application for an extension of time to 2 January 1991 in which to serve its evidence-in-reply.
The scale of costs in opposition proceedings makes no provisions for costs where parties do not attend a hearing. Therefore I make no award of costs.
Summary
I refuse to allow HUNTER an extension of time to 2 January 1991 in which to serve its evidence-in-reply.
(M. KENDALL)
Delegate of the Commissioner of Patents
Attorneys for the applicant: Griffith Hack & Co (Melbourne)
Attorneys for the opponent : Thomson Pizzey
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