Garford Pty Ltd v DYWIDAG-Systems International Pty Limited
[2012] APO 106
•3 October 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Garford Pty Ltd v DYWIDAG-Systems International Pty Limited [2012] APO 106
Patent Application: 2009329824
Title:Apparatus and method for manufacturing a cable bolt
Patent Applicant: DYWIDAG-Systems International Pty Limited
Opponent: Garford Pty Ltd
Delegate: Dr S. D.Barker
Decision Date: 3 October 2012
Hearing Date: Written submission filed on 10 August, further submissions in response filed 17 August
Catchwords: PATENTS – extension of time serve evidence in support – evidence has been served and completed – explanation of the delay – nature and significance of evidence – extension allowed – costs awarded against opponent
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: 3 October 2012
DECISION
I grant an extension of time to serve evidence in support until 14 August 2012.
I direct that the time serving evidence in answer shall be three months from the date of issue of this decision.
I award costs against Garford Pty Ltd.
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 of the opposition was initially due on 14 January 2012, but the opponent sought and was granted an extension of time for serving evidence until 14 April 2012. A second extension of time until 14 July 2012 was sought to file evidence in support, which was also allowed.
On 16 July 2012 the opponent served a statutory declaration of Allan Clifford Wightley as part of its evidence in support, and also requested a third extension of time of two months from 14 July 2012 until 14 September 2012. The applicant objected to the extension, and written submissions in relation to the extension were filed by both parties on 10 August 2012. The opponent also filed submissions in response to the applicant’s submissions on 17 August 2012.
Importantly, in the intervening period between written submissions the opponent served and completed their evidence in support with the statutory declaration of Dr Andrei Lozzi on 14 August.
Reasons for the extension of time
The reason for the extension of time was given as:
“1.In the time since the last extension request, the Opponent has completed a statutory declaration of Allan Wightley, an independent expert witness. Mr Wightley's evidence provides an account of relevant common general knowledge, and includes a detailed review of the prior art on which we rely in this opposition, together with the opposed specification and claims. Mr Wightley's declaration, with annexures, is a significant declaration of several hundred pages, which took a considerable amount of time to prepare, including numerous meetings with Mr Wightley and background research. Mr Wightley's declaration has been served on the attorneys for the Applicants.
2.We have also completed a review of the materials that were entered into evidence in Federal Court proceedings relating to a patent owned by the Opponent in the same field of technology. Some materials from those proceedings have been submitted as part of Mr Wightley's declaration.
3.In addition, we are progressing the evidence of a second independent expert. The second witness will provide essential evidence to corroborate Mr Wightley's evidence regarding the state of the relevant common general knowledge.
4.Additional time is required to enable the Opponent to complete the evidence of the second independent expert. The Opponent considers that the Commissioner will be greatly assisted by the second expert's evidence. The Opponent also seeks a more limited extension, on the basis that it now anticipates being able to complete the further evidence relatively quickly.”
Further information was provided in the opponent’s submissions and statutory declaration by Rebekah Frances Gay. With relation to the Federal Court proceedings, Ms Gay declares at paragraph 6:
“Those proceedings were listed for hearing before Justice Yeates of the Federal Court on 20 to 24 February 2012, 1 March 2012 and 2 March 2012, being a total of seven days. Both parties were represented by junior counsel and senior counsel, and there was extensive cross-examination of expert witnesses, including Professor Wightley, along with oral submissions. The preparation for the hearing took several weeks of intensive work over the course of January and February 2012.”
At paragraph 10 Ms Gay declares:
“The application seeks two further months in which to complete evidence in support. As set out in that application, the Opponent has been working with a second independent expert, being Dr Andrei Lozzi from the University of Sydney, to prepare a further declaration that relates to the state of the relevant common general knowledge.”
In their submissions in response, the opponent also altered their position, submitting that in light of the evidence having been served and completed a one month extension until 14 August 2012 was appropriate in order to admit the evidence of Dr Lozzi.
The relevant law
In accordance with regulation 5.8 of the Patents Regulation 1991, the time for serving evidence in reply is three months from the date of service of the statement of grounds and particulars. This time may be extended under regulation 5.10(2). However, an extension is governed by regulation 5.10(5), which reads:
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion - ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
The law applying to extensions of time under regulation 5.10(2) has been considered in many decisions of the Commissioner, and several decisions of the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; (1994) AIPC 91-057; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; [1997] FCA 424; (1997) AIPC 91-330; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; (2001) AIPC 91-697, 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 considerations (Ferocem at AIPC 38, 208; IPR 247-8, Goninan at AIPC 39, 434; IPR 220). Relevant considerations include:
a)The reason why the evidence was not served earlier (Ferocem at AIPC 38, 207-8; IPR 247),
b)The public interest in determining a serious opposition on its merits (Goninan at AIPC 39, 435-6; IPR 222), and
c)The interests of the parties (Ferocem at AIPC 38, 208; IPR 247).
In BHP Billiton Worsely Alumina Pty Ltd v Alcoa of Australia Limited [2012] APO 60 at paragraph 6, I noted that there is little useful purpose in an objection once the evidence has been completed. Nevertheless, as in BHP it is still necessary to briefly consider the merits of the extension.
Explanation of the delay
It is clear from both the second and third applications for extensions of time, the submissions from the opponent and the statutory declaration by Ms Gay that significant efforts were expended by the opponent in preparing for the Federal Court proceedings in which Mr Wightley was involved. The final day of hearings for the Federal Court proceedings was noted as being 2 March 2012. As noted by Ms Gay in her declaration most of the significant work for these proceedings was done in January and February 2012. The second extension of time granted was for three months from 14 April to 14 July 2012, with that application stating:
“Additional time is required to enable the Opponent to progress discussions with its expert witness, and to make inquiries regarding additional potential witnesses. The evidence of those witnesses will be critical to the outcome of the opposition in respect of the grounds of novelty and inventive step.”
It is presumed that “its expert witness” described in the paragraph above refers to Mr Wightley, whose evidence was served on the final day of the period granted in the second extension of time, and not Dr Lozzi. Thus, the first tangible indication that Dr Lozzi was retained by the opponent occurs in the third application, filed on 16 July 2012, as the “second independent expert”. The explanation does not provide any further information as to when Dr Lozzi was retained, and vaguely states that his evidence was “progressing”.
This then leaves the question of what actions the opponent had taken in the 6 months since filing the statement of grounds and particulars and the filing of the second application to secure the services of other expert witnesses such as Dr Lozzi. As the proceedings in the Federal Court were completed on 2 March 2012, this left approximately a month and a half between that date and the date of filing the second application. The second application provides no indication that Dr Lozzi had been retained at that stage. It is unclear why Dr Lozzi’s services were not secured earlier . 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 AIPC 39, 4398; IPR 225-226). The declaration by Dr Lozzi has now been served, so its nature is apparent. The declaration itself is 8 pages long, and provides discussion of citations relevant to the issue of inventive step. However, these citations have already been discussed by Mr Wightley in his declaration, and Dr Lozzi does not consider any new citations.
The opponent has submitted that the evidence of Dr Lozzi corroborates that of Mr Wightley. In countering assertions by the applicant, the opponent also submits in their submissions in response that the evidence is not simply repetitive of Mr Wightley’s evidence, and “provides evidence of the approach that a person skilled in the art (who has not seen the Opposed Application) would take”.
A cursory review of the evidence appears to support the assertion of the opponent. Without determining the merits of the evidence, the evidence by Dr Lozzi provides some additional information not provided in the evidence by Mr Wightley, such as providing a proposed solution to a posed problem faced by a person skilled in the art. Therefore the evidence, whilst corroborating the evidence of Mr Wightley, also has some significance through this additional information. This favours the granting of the extension.
Despite this, it is important to note that the third application for extension of time and the submissions of the opponent do not indicate that the evidence of Dr Lozzi was to provide any such additional information. Rather, the indications were that the evidence was merely to be directed towards common general knowledge and corroborate the evidence of Mr Wightley. Relying solely on these assertions it would be hard to comprehend how the evidence of Dr Lozzi would be of any further significance over the evidence of Mr Wightley. Therefore whilst the nature and significance of the evidence can be assessed now that the evidence has been served, such a determination would not have been possible before the service of the evidence.
Interests of the parties
As commonly occurs, I find that the interests of the parties lie in opposite directions. It is not necessary to determine whether or not they are completely offsetting.
Balance of considerations
In reaching a decision, I must weigh up all relevant considerations. I find that the explanation of delay is inadequate, but the nature and significance of the evidence supports the extension. These considerations are competing, and in the present case I consider that the nature and significance of the evidence is sufficient to justify giving this consideration greater weight. The balance of these considerations favours granting the extension, and the other considerations do not disturb that balance since the interests of the parties, while not completely offsetting, are of much less weight than the public interest.
The remaining question is the length of the extension. I believe that the most appropriate course of action would be to grant the extension to serve evidence in support until 14 August 2012, as requested by the opponent in their submissions in response. I will grant this extension.
Finally, it is necessary to consider when evidence in answer is due. Regulation 5.8(2) says that the time runs from the date that evidence in support was completed. Due to the uncertainties created by the extension of time, that should be reset to three months from the date of this decision.
Costs
In most circumstances costs follow the event. However, as noted there are inherent deficiencies in the explanation provided by the opponent to support their request for an extension of time. I do not consider there to be an adequate explanation of why the evidence of Dr Lozzi was introduced so late without prior indications of its existence. I note that the significance of the evidence of Dr Lozzi was only apparent after the evidence was served.
Therefore in this instance I do not believe it is appropriate that costs to follow the event. If not for the evidence being available to me the extension would not have been granted. I will award costs against the opponent, Garford Pty Ltd.
Dr S. D.Barker
Delegate of the Commissioner of Patents
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