Garford Pty Ltd v DYWIDAG-Systems International Pty Limited - [2013] APO 43

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Garford Pty Ltd v DYWIDAG-Systems International Pty Limited [2013] APO 43

Patent Application: 2009329824

Title:Apparatus and method for manufacturing a cable bolt

Patent Applicant:  DYWIDAG-Systems International Pty Limited
Opponent:  Garford Pty Ltd
Delegate:  Greg Powell
Decision Date:  23 July 2013
Hearing Date:  Written submissions from both parties filed on 5 July and submissions in response filed on 12 July by opponent

Catchwords: PATENTS - extension of time to file evidence in reply – explanation of delay is not adequate – nature and significance of the evidence supports extension – balance of considerations favours extension

Representation: Patent applicant: Spruson & Ferguson
Opponent:Shelston IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009329824

Title:Apparatus and method for manufacturing a cable bolt

Patent Applicant: DYWIDAG-Systems International Pty Limited
Date of Decision: 23 July 2013
DECISION
Extension of time to serve evidence in reply allowed. Time extended to 11 July 2013.
No award of costs.
REASONS FOR DECISION
Background

DYWIDAG-Systems International Pty Limited is the applicant for patent application 2009329824. A notice of opposition to the grant of the patent was filed by Garford Pty Ltd (the opponent) on 14 July 2011, and a statement of grounds and particulars was served on 14 October 2011. Evidence in support and evidence in answer were completed and evidence in reply was initially due 11 March 2013. A first extension to serve evidence in reply was granted extending this period to 11 June 2013. The opponent has requested a one month extension until 11 July 2013, and the applicant has asked for a hearing in relation to the extension. Both parties have filed written submissions that are the basis of this decision.

On 20 June 2103 the opponent filed evidence in reply in the form of a declaration by Allan Neville Hedrick. On 25 June 2013 the opponent also filed evidence in reply in the form of a declaration by Allan Clifford Wightley. Written submissions in relation to the extension were received from both parties on 5 July 2013. The opponent also filed further submission in response on 12 July 2013. On 5 July 2013 the opponent filed a declaration of Campbell John Seccombe which completed the evidence in reply.
The relevant law
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 there are substantial changes to Chapter 5 of the Patents Regulations 1991. In the case of the present application and the present extension of time, the extension is governed by regulation 5.10 as in force immediately before 15 April 2013. One relevant consequence of the amendments to Chapter 5 is that evidence that is required to be served on or after 15 April 2013 is to be filed with the Commissioner rather than served. Consequently in this decision I will make reference to the filing of evidence where that is to happen on or after 15 April 2013.
Sub-regulation 5.10(2) gives the Commissioner the power to extend the time for taking a step prescribed in Chapter 5, which in this case is the filing of evidence in reply. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5)(b)) and have been given a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
The considerations relevant to this question have been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant factors. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
a)The reason why the evidence was not served earlier (Ferocem at 247)
b)The public interest in determining a serious opposition on its merits (Goninan at 222)
c)The interests of the parties (Ferocem at 247)
The extension
Evidence in reply was originally due to be served by 11 March 2013. That period was extended to 11 June 2013. The application for extension of time states:
“Since the previous application for extension, the opponent has been reviewing and analysing the applicant’s evidence in answer, including the decision handed down by Justice Yates [28 February 2013] in the Federal Court proceedings involving the applicant and the opponent. The detailed analysis of the applicant’s evidence in answer has now been completed, and the preparation of the declarations of Mr Allan Neville Hedrick and Mr Allan Wightly is in its final stages. However, a small amount of additional time is required to finalise these declarations.
In addition, as previously foreshadowed, the opponent intends to submit a declaration from another independent expert. The opponent has now identified a suitable expert, and again the process of preparing a declaration of this expert is well advanced. However, the time required to identify this expert was longer than anticipated and a small amount of additional time is required to complete this declaration.”
Further information was provided in the opponent’s submissions and statutory declaration by Rebekah Frances Gay outlining other factors affecting the preparation of evidence in reply:
“a period of 4 weeks during which Ms Gay, who is primarily responsible for the conduct of the opposition, was on leave;
preparation and submission of an appeal from the decision of Justice Yates, which was lodged in April 2013; and
the travel commitments of Mr Hedrick, who has both submitted a declaration and who is the primary instructor in relation to this opposition.”
Explanation of delay
Federal Court decision review
The first application for an extension of time to file evidence in reply (the first extension) discussed that a detailed review of the applicant’s evidence in answer had been completed. The explanation noted that the applicant’s evidence in answer contained material in the form of affidavits and transcript extracts from Federal Court proceedings involving the applicant and opponent. The decision from these proceedings was handed down on 28 February 2013 and, given the length of the decision (344 paragraphs), the opponent had asked for more time to allow a review of the evidence in answer in view of the decision. As noted above, this review and analysis also formed part of the reason for the present extension.
Prima facie it is difficult to see, as was noted by the applicant in their submissions, why a decision on another application would be relevant as it would seem that evidence in that matter does not form any part of the evidence in answer to which the opponent intends to reply. Nevertheless, that material from these proceedings was supplied as part of evidence in answer. At present I cannot see the relevance of this material to the present opposition. It is difficult to even determine if the affidavits attached to the declaration are to be considered expert evidence. I note that the opponent had the same issues and wrote to the applicant for clarification. In these circumstances, given the seeming prima facie irrelevance of the material and given the applicant’s refusal to explain why the material was supplied when asked by the opponent (as noted by the opponent in their submissions), it appears prudent that the decision be reviewed by the opponent in order to clarify the relevance of the additional material provided as evidence in answer.
That being said, I note that the declarations filed for evidence in reply do not explicitly say anything about the supplied affidavits and transcript extracts. Given that circumstance, it is difficult to see how the review of the Federal Court decision held up the preparation of evidence on other parts of the evidence in answer. I can only see that it would have held up evidence in reply directed to the affidavits and extracts. It appears that no evidence addressing these has been (or will be) supplied. The review, as well as preparing for an appeal to the decision of Yates J, does not adequately explain the delay in filing evidence that has nothing to do with either.
Declaration of Mr Hedrick
I note that no date is provided in the explanation of the delay to indicate when the opponent had finished reviewing the decision of Justice Yates in the context of the evidence provided in answer. In the absence of such a date for completion of this review, and given the appeal to the decision of Justice Yates was lodged on 18 April 2013, it is unclear as to why the Mr Hedrick declaration could not have been submitted before 11 June 2013 deadline.
The previous application for extension of time pointed out that Mr Hedrick’s declaration was expected to be completed within a week or two of 11 March 2013. Mr Hedrick was the person responsible for providing instruction on behalf of the opponent in relation to the appeal, however as noted above this work was completed on 18 April 2013. In her declaration Rebekah Frances Gay states that in the time from 11 December 2012 to 20 June 2013 there were a number of periods during which Mr Hedrick was travelling for business and had limited availability. No detail is provided in regard to these absences explaining the inability to file Mr Hedrick’s declaration before 11 June 2013.
Declaration of Mr Wightly
While at the time of the first extension the Mr Wightly declaration was not as far advanced as the Mr Hedrick declaration, the second application indicates that it was is in its final stages, similarly to the Mr Hedrick declaration. I note that explanation has not been provided as to the particular delays that prevented Mr Wightly’s declaration from being filed before 11 June 2013. As discussed above, no date is provided to indicate when review of the Justice Yates decision had been completed. As such it is not apparent as to the particular circumstances that prevented completion of the Mr Wightly declaration before 11 June 2013.
Declaration of Mr Seccombe
At the time of the first extension the opponent indicated that they intended to submit a declaration from another independent expert. They had not yet identified a suitable expert. The opponent submitted that by the time of the present extension request:
“Mr Seccombe had been identified and retained and a number of meetings had been held with Mr Seccombe. Mr Seccombe had also been provided with and reviewed copies of all relevant materials, and provided the comments that are set out in his declaration. At that time, the work required to be done on Mr Seccombe’s declaration was to have him review a draft declaration and approve it…”
As submitted by the applicant, no detailed explanation has been provided as to when the expert was identified or why the evidence could not be filed by 11 June 2013. Given the review of the decision of Yates J and the work required to complete the Hedrick and Wightly declarations, it appears that the progress from identification to drafting of the Seccombe declaration has been diligent. The opponent also notes in the application for extension of time that the time required to identify this expert was longer than anticipated. While no dates have been provided for the various stages of preparation of this declaration, given the circumstances, the opponent demonstrates a course of action involving a number of time consuming steps that sufficiently explain the delay.
Absence of Ms Gay
With respect to the absence of Ms Gay, while I can accept that such absences may delay evidence preparation, there are two things I would note. Firstly, Ms Gay works for a large firm. I find it difficult to understand why there would have been no arrangements in place to ensure progress of the opposition during what I can only assume to be a planned absence. Secondly, the absence was in late January and early February. I cannot see why an absence at that point in time has any relevance to the period from March to June. Ms Gay had returned from leave. I do not find this explanation of the delay satisfactory.
In summary, notwithstanding that the opponent appears to have been diligent preparing the Mr Seccombe declaration, I am not satisfied that there has been a sufficient explanation of the delay.
Public interest
When considering the public interest, it is necessary to form a view as to the nature and significance of the evidence that is being prepared (Goninan at 225-6). The evidence will consist of three declarations (as discussed above) addressing statements made by Mr Fuller and Mr Hutchins, who made declarations for the evidence in answer.
According to the applicant’s submissions, the evidence in reply is effectively limited to commenting on viability of solutions to problems set out in the opposed application as discussed in the evidence in answer. The applicant submits that this does not relate to the question of inventive step and that the evidence is not expected to greatly assist the Commissioner at hearing.
In considering the nature and significance of the evidence it is incumbent that I consider whether the evidence appropriately forms evidence in reply and also consider “the evidence in respect of the patent specification, the grounds of oppositions and the particulars of the grounds and the material which has already been filed” (National Starch & Chemical Co v Commissioner of Patents at 33). It appears to me that the evidence is directly relevant to the question of inventive step. In assessing whether an invention involves an inventive step, consideration must be given to the relevant solutions that a person skilled in the art may develop to solve a particular problem. Evidence presented by the opponent is in direct reply to declarations of Mr Fuller and Mr Hutchins, which comment on the viability of solutions to problems set out in the opposed application. The opponent is of the opinion that the solutions presented by the applicant contain deficiencies which are relevant to the problem – solution assessment of inventive step. Such evidence in reply will assist the delegate at hearing in reaching a better decision on the opposition. Thus I am satisfied that the nature and significance of the evidence favours an extension of time.
A further aspect of public interest is ensuring the expeditious disposal of matters before the Commissioner. While the applicant submits that the delay in filing evidence in reply does not satisfy the public interest I note that the granting of an extension to file evidence will not result in any delay in proceedings. The evidence has already been filed and the opponent has confirmed that evidence in reply is complete. Pursuant to the present extension of time decision, the opposition is ready to proceed to hearing.
Interests of the parties
As is normal in such matters, the interests of the parties are opposed. I do not believe that a detailed weighing of the relative interests of the parties is necessary in this case.
Conclusion
I am satisfied that there is not an adequate explanation of the delay, but the public interest favours allowing the extension. On balance, I give greater weight to the public interest, and accordingly I am satisfied that an extension is appropriate in the circumstances. I will allow the extension of time.
Costs
Garford Pty Ltd has been successful in this matter. However, they did not file an adequate explanation and an extension was granted because it was more in the public interest to do so. The conclusion with respect to public interest was influenced by the nature and significance of the evidence which was filed after the objection by the applicant. It would seem to me that the applicant was justified in its objection. As such, I do not think it is appropriate to take the usual path that costs should follow the event. It is appropriate in this matter that there is no award of costs.
Greg Powell
Delegate of the Commissioner of Patents