Fysh Pty Ltd v Wesley Jessen Corporation

[1998] APO 74

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 620083 in the name of  FYSH PTY LTD

Title:          Improved Contact Lens Design

Action:          Request under Regulation 5.5(1), by FYSH PTY LTD, for dismissal of an opposition made under Subsection 104(4) by WESLEY JESSEN CORPORATION.

Decision:          Issued

Abstract

Conduct of the applicant is not a relevant consideration under Section 104(3) and Grounds 6 and 7 are not sustainable in light of Regulation 5.3(4). Opposition in relation to Grounds 2 and 3 is "so manifestly faulty that it does not admit of argument". Therefore opposition in relation to Grounds 2, 3, 6 and 7 is dismissed. The opposition in relation to the remaining grounds however stands even though only those particulars in relation to paragraphs 2(a)(ii) and 2(a)(iii) have been found to be sufficient or relevant. Direction that all other particulars not be available to the opponent to argue at the opposition hearing (E.I. DuPont de Nemours and Company v DowElanco (1994) AIPC 91-067).

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 620083, in the name of Fysh Pty Ltd and a request under Regulation 5.5(1), for dismissal of an opposition made under Subsection 104(4) by Wesley Jessen Corporation.

background

Patent Application No. 620083 in the name of Igel International Limited (Igel) was advertised accepted on 31 January 1991.  The application was opposed and in Igel International Limited v. Wesley Jessen Corporation and General Optical Pty Ltd [1996] APO 22 (2 April 1996) the delegate found that there were valid objections to the specification under Section 40 and allowed the applicant the opportunity to amend.

Section 104 amendments to the specification were eventually advertised accepted on 26 February 1998. Wesley Jessen Corporation (Wesley) opposed allowance of the amendments and served its Statement of Grounds and Particulars on 26 May 1998. On 25 September Igel sought dismissal of the opposition under Regulation 5.5. Subsequently the application was allowed to proceed in the name of the assignee Fysh Pty Ltd (Fysh).

The matter came for hearing in Canberra on 17 December 1998. Fysh was represented by Mr John Walsh, Patent Attorney of Walsh & Associates, Sydney. Wesley relied on written submissions filed by its patent attorney Mr John Terry of Griffith Hack, Sydney.

THE STATEMENT OF GROUNDS AND PARTICULARS

"The grounds of opposition upon which the Opponent relies are as follows:

1.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, the specification would claim matter not in substance disclosed in the specification as filed.

2.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, a claim of the specification would not in substance fall within the scope of claims of the specification before amendment.

3.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, the specification would not comply with sub-section 40(2) namely the specification would not fully describe the invention and the best method known to the applicant of performing the invention.

4.The amendments, or some of them are not allowable because as a result of the amendments, or some of them, the specification would not comply with sub-section 40(2) in that the specification does not end with claims limited to defining the invention described.

5.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, the specification would not comply with sub-section 40(3) namely that one or more of the claims are not clear and/or not succinct and/or not fairly based on the matter described in the specification.

6.The Commissioner in his discretion should refuse to allow the amendments as provided under section 104(3) due to the conduct of the applicants.

7.The amendments do not meet the terms of the Decision of the Delegate of the Commissioner in relation to an opposition under section 104.

PARTICULARS

1.Confusion has been created to the multiplicity of amendment proposals and changes to amendments over an extended period of time; for the avoidance of doubt the opponents append to this statement of particulars a copy of what the Opponent's believe by virtue of communications from the Patent Office to be the currently proposed amendments to the claims, there being no proposed amendments to the description.

2.In support of Ground 1 of the above numbered grounds of opposition, the following respective particulars are given.

(a)no substantive disclosure and no meaning subsists in the accepted specification with reference to phrases in claim 1 including:

(i)        "fitting the eye"

(ii)        the feature in lines 10-12

(iii)"juxtaposition of the central zone arising from draping of the lens".

3.In support of Ground 2 of the above numbered grounds of opposition, the following respective particulars are given.

(a)       The Opponents repeat the particulars in paragraph 2.

(b)The Applicants purport to describe a new method of fitting contact lenses but have not described sufficiently or clearly such a method.

4.In support of Ground 3 of the above numbered grounds of opposition the following respective particulars are given.

(a)No novel contact lens per se is described over the admitted prior art and the prior art listed by the opponent in the previous opposition under section 59 and which the Opponent repeats as relevant; the only alleged invention described relates to a method of fitting contact lenses.

5.In support of Ground 4 of the above numbered grounds of opposition, the following respective particulars are given

(a)       The Opponents repeat the particulars in paragraphs 2, 3 and 4.

6.In support of Ground 5 of the above numbered grounds of opposition, the following respective particulars are given.

(a)       The Opponents repeat the particulars in paragraphs 2, 3 and 4.

7.In support of Grounds 6 and 7 of the above numbered grounds of opposition, the following respective particulars are given.

(a)The applicants have not made a bona fide attempt within the time prescribed in the Delegate's original decision to propose amendments in accordance with the terms of that decision.

(b)In response to observations raised against the allowability of the amendments the applicants have been grossly dilatory in proposing amendments to seek to comply with the terms of he [sic] decision.

(c)The proposed amendments if made would result in a specification which do [sic] not in fact comply with the terms of the Delegate's decision.

(d)This is a proper case for the Delegate to exercise discretion on behalf of the Commissioner to decline to entertain further proposals and to reject the amendments and accordingly the application."

DECISION

The principles to be applied in considering a request for dismissal are well established and are similar to the reasons for summary dismissal which are described in General Steel Industries Inc v Commissioner for Railways(NSW) and others (1964) 112 CLR 125:

"It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited  .. to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense".

At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or "so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument"; "so to speak apparent at a glance".”

On this basis, an opposition will be dismissed only if it is clear that the opposition could not possibly succeed. I note that from L'Air Liquide v CIG Ltd 24 IPR 77 that rather than dismiss the opposition in it entirety I may dismiss a ground of opposition which is unsupported by any particulars. Also in Norwood Industries v Macbird Floraprint Pty Ltd (1992) AIPC 90-912 I held that a ground of opposition should not be dismissed merely because some of the particulars said to support it were defective.

The present case is one in which amendments have followed the substantive determination of a Section 59 opposition. In those circumstances it is often difficult for the parties to separate the substantive issues from those that relate to Section 104 and this is clearly the case here, as is apparent from at least Grounds 6 and 7 the Statement of Grounds and Particulars and also from the submissions. Mr Terry seems to admit that some of the issues raised may more correctly be considered in a final determination of the Section 59 opposition but argues that they nevertheless are relevant to the Commissioner's discretion under Section 104(3). He says for example that the Commissioner can take account of a lack of due diligence as is alleged in relation to Ground 6.

Mr Terry may be alluding to the considerations discussed in Sly v United Development Corporation Pty. Ltd. 106 CLR 633 and the line of UK decisions including Imperial Chemical Industries (Whyte's) Patent (1978) RPC 11. Menzies J in Sly however indicated that:

"Broadly speaking, the judicial discretion which s. 76 confers when ss. 71 and 78 are complied with does not usually require consideration of matters that are foreign to the amendment and its effect and do not relate to the conduct of the applicant";

thus concluding as in Whyte's Patent that only in exceptional cases would the applicant's conduct be a relevant consideration. I note also that these decisions were made in the context of legislation that refers specifically to fraud as an adjunct to the normal considerations (See Section 79 of the Patents Act 1903 and S. 31 of the UK Act 1977).

The discretion allowed under the 1990 Act is somewhat different in character and I note the combined effect of Regulations 10.2 to 10.5 and Regulation 5.3(4) which states that:

"A person must not oppose the allowance of a proposed amendment of a complete specification, except on the grounds that the amendment is not allowable under section 102 of the Act ("what amendments are not allowable?")"

Hence I find that the conduct of a party is not relevant to the Commissioner's consideration under Section 104(3) and as Ground 6 does not go to the allowability of the amendments under Section 102, it is obviously untenable. That is not to say that the conduct of the parties may not be considered subsequently in an award of costs or by the Delegate in the final Section 59 determination in the event that a further opportunity to amend is contemplated. Here I refer to the decision of Deputy Commissioner Herald in Queensland Plumbing Pty Ltd v Trade Waste Diversion Pty Ltd AIPC 90-992 at 39,390 who found that, if the issue of alleged false suggestion was a relevant consideration, it was in the discretion of the Section 59 Delegate in allowing the applicant to amend the application.

Consequently the opposition is relation to Ground 6 is dismissed, as is that in relation to Ground 7 which is clearly outside the requirement of Regulation 5.3(4) on any interpretation I can place on it.

The remaining grounds all relate to matters prima facie relevant to Section 102. Mr Walsh objected to the wording "the amendments, or some of them" but it is clear that the grounds are referring to paragraphs 102(1), 102(2)(a), 102(2)(b) re S.40(2)(a), 102(2)(b) re S.40(2)(b) and 102(2)(b) re S.40(3) respectively . Whether these grounds are adequately particularised is another question and in this regard particulars can be considered adequate if they provide the applicant a sufficient indication of the material facts which the opponent will need to establish in order for its case to be made out.

Ground 1

This relates to matter not in substance disclosed and is said to be supported by the particulars at 2(a), ie. no substantive disclosure of the following in claim 1 as proposed to be amended:

(i)        "fitting the eye";

(ii)       the feature in lines 10-12; and

(iii)"juxtaposition of the central zone arising from draping of the lens".

The phase "fitting the eye" is not to be found in the proposed claim but I believe it can only refer to "fitting to the eye" at line 2. These word are also present in the existing claim 1 and hence it is impossible to argue that "as a result of the amendment" the specification would claim matter not in substance disclosed or for that matter not comply with section 40.

The particular at (ii) is said not to be clear because it could refer to 3 different features but I believe that the phase at those lines can sensibly be read as a single concept or feature and that this is what is intended by the opponent. Mr Walsh referred me to submissions made by the applicant to the examiner on this point and to the wording at (iii) above but this appears to be wholly irrelevant to my decision except to suggest that the applicant indeed has an appreciation of the matters in dispute. I find the particular at (ii) adequate for its purpose as is that at (iii) even though "arising" is a misquote. It should be quite clear that the Commissioner's determination of the opposition under Regulation 10.5(3) (as under Section 59) is entirely independent from whatever may have been argued before the examiner and the opponent is entitled to whatever grounds are allowed by the regulations whether they have previously made submissions on those issues or not. For a discussion of this issue in the context of the legislative framework see the Delegate's decision in Concorde Trading v CronerTrading 29 IPR 507.

Ground 1 is not shown to be obviously untenable.

Ground 2

Ground 2 relates to whether after amendment the claims would fall within the scope of the claims before amendment and is said to be supported by the particulars at 2(a) discussed above and at 3(b) that:

"The Applicants purport to describe a new method of fitting contact lenses but have not described sufficiently or clearly such a method".

These particulars do not relate to the scope of the claims and hence they clearly provide no material facts.

Ground 2 should be dismissed.

Ground 3

Ground 3 states that it is in relation to the specification not fully describing the invention and the best method of performing it. The particular given at paragraph 4 (a) is that:

"No novel contact lens per se is described over the admitted prior art and the prior art listed by the opponent in the previous opposition under section 59 and which the Opponent repeats as relevant; the only alleged invention described relates to a method of fitting contact lenses".

This particular appears totally irrelevant to the ground and most significantly could not be said in any way to arise "as a result of the amendment" since the amendments do not affect the description. Consequently Ground 3 is not particularised and should be dismissed.

Ground 4

Ground 4 says that "the specification does not end with claims limited to defining the invention described." and is said to be supported by the particulars at paragraphs 2, 3 and 4. Of these only the particulars at 2(a)(ii) and 2(a)(iii) could possibly lead to an arguable case but nevertheless I believe they offer sufficient particularization.

Ground 4 is not shown to be obviously untenable.

Ground 5

Ground 5 relates to the assertion that the claims as a result of amendment would not be clear, succinct or fairly based. The particulars at paragraphs 2, 3 and 4 are given and again as for Ground 4 above, only the particulars at 2(a)(ii) and 2(a)(iii) appear to provide material facts to support the opposition on this ground.

Nevertheless Ground 5 is not shown to be obviously untenable.

CONCLUSION

I have found that the opposition in relation to grounds 2, 3, 6 and 7 is "so manifestly faulty that it does not admit of argument". The opposition in relation to the remaining grounds however stands even though only those particulars in relation to paragraphs 2(a)(ii) and 2(a)(iii) have been found to be sufficient or relevant. In this regard I direct that all other particulars not be available to the opponent to argue at the opposition hearing (E.I. DuPont de Nemours and Company v DowElanco (1994) AIPC 91-067).

Pursuant to Regulation 5.8(1)(a)(iii) the time for service of evidence in support of the opposition commences from the date of this decision.

COSTS

In actions before the Commissioner, costs normally follow the event and here the applicant has been largely successful. On the other hand my reading of the file indicates that the prosecution of the amendments has been very protracted and the applicant must bear much (but not all) the responsibility for this. As a result I think the opponent has been frustrated in the resolution of the section 59 opposition and this frustration seems to have flowed into the Statement of Grounds.

In the circumstances I am not inclined to make any award of costs.

Philip Spann
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant:  Walsh & Associates, Sydney
Patent Attorneys for the opponent:  Griffith Hack, Sydney