Gerber Scientific Products Inc. v. L. Vogel and Sons Pty Ltd

[1990] APO 30

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Action:Application No. 551075 by GERBER SCIENTIFIC PRODUCTS INC., Opposition by L. VOGEL AND SONS PTY LTD under Section 59, and an Application for an Extension of Time to Serve Evidence‑in‑Reply

Background
         Application No. 551075 by Gerber Scientific Products Inc (GERBER) was advertised accepted in the Official Journal on 17 April 1986.  The opponent, L. Vogel and Sons Pty Ltd (VOGEL), completed serving evidence‑in‑support of its opposition on 14 July 1989.  GERBER finished serving its evidence‑in‑answer on 15 January 1990.  In a letter dated 14 March 1990 GERBER's attorney wrote to both VOGEL's attorney and the Office saying that it would object to any extension of the time for serving evidence‑in‑reply.  VOGEL served and lodged part of its evidence‑in‑reply on 12 April 1990 and requested an extension of time until 14 July 1990 in which to serve the remainder of its evidence‑in‑reply.  As expected GERBER objected to the application for extension of time and the matter was set down for hearing on 29 May 1990.  VOGEL was represented at the hearing by Mr C. Marsh, patent attorney of F.B. Rice & Co, and GERBER was represented by Mr G. Turner, patent attorney of Spruson & Ferguson.

Patent application No. 551075 is the parent of petty patent No. 570183 which was lodged under the provisions of section 51 and which was sealed on 28 April 1988. On 4 October 1988 GERBER commenced infringement proceedings against Discount Signwriting Supplies Pty Ltd (DISCOUNT) in the Federal Court (No. G1263 of 1988) . DISCOUNT has filed a cross claim in the infringement proceedings which alleges that the petty patent is invalid. A delegate of the Commissioner extended the term of the petty patent even though DISCOUNT and another party lodged notices under sub‑section 68B(3) (Gerber Scientific Products Inc v North Broken Hill Ltd and Anor 1990 AIPC 90‑660). The sub‑section 68B(3) informants have appealed against this decision in the Federal Court (No. G886 of 1989).
The Application
         The circumstances in which, and the grounds upon which the application to extend the time relies read as follows:

"Following the receipt of the Declarations‑in‑Answer in respect of this matter time was spent considering the Declarations to ascertain the nature of the evidence‑in‑

reply that would be required.  In view of the fact that there is a parallel matter in connection with a divisional petty patent which has been considered by the Patent Office and is now before the Federal Court we deemed it appropriate that the opponent in this matter should have an opportunity to view the evidence that had been posted before the Federal Court.  Some time was required to obtain this evidence.  We also became aware that the corresponding West Germany patent application had been rejected and time has been spent in seeking to acquire copies of the papers used in connection with the opposition in West Germany.  During the consideration of the above materials care had to be taken to ensure that any evidence filed in reply was truely in reply and time has been spent in distinguishing between matters which are truely in reply and matters which are not in reply.

The extensive materials that have been collated are being considered by a proposed declarant.  We have not as yet received that declarants comments on the material provided to him.  Further time it (sic) is required for this declarant to complete his analysis of the evidence in answer and to sign a declaration in this matter."

Submissions
         Mr Marsh lodged a letter on 17 May 1990 which formed the basis for his submissions at the hearing.  The main points in support of the application can be summarised as follows:

1.The matter is of considerable complexity and extensive evidence‑in‑support and evidence‑in‑answer have been filed.  The evidence is more than normally found in an opposition to a simple mechanical invention.

2.There is a divisional petty patent relating to the present invention which is being litigated and there is a close nexus between the present matter and the litigation relating to the validity of the petty patent.  Some time was required in order to obtain a copy of certain evidence filed in respect of the petty patent proceedings.

3.Corresponding opposition proceedings have taken place in West Germany and VOGEL considered that the evidence filed in connection with this opposition should be reviewed.  Although the specifications cited in this opposition were readily available it has taken some time to obtain copies of the declarations used in the opposition proceedings from the West German Patent Office.

4.The earlier decision (Gerber Scientific Products Inc v North Broken Hill Ltd and Anor, loc. cit.) emphasised the question of whether it was known in Australia to use adhesive backed vinyl webbing for the purpose of making signs.  This issue was also central to the evidence filed in answer in the present opposition.  Extensive efforts have been made to establish the state of the common general knowledge in this art in Australia.

5.Although one declaration has been filed in reply further declarations are being prepared for signature by persons skilled in the art.

Mr Turner lodged a letter on 22 May 1990 which enclosed a statutory declaration made by Donald K. Huber and a statutory declaration made by Kay Johnston with several exhibits attached.  The main points made by Mr Turner can be summarised as follows:

1.This is not a complex case and VOGEL concedes the specification concerns a simple mechanical invention.  In any case the opponent has had sufficient time (at least 4 years) to come to terms with the alleged complexity of the case.

2.DISCOUNT's affidavits, which form part of GERBER's evidence‑in‑reply lodged on 12 April 1990, were sworn in May, June and July of 1989.  Clearly there has been co‑operation between DISCOUNT and GERBER otherwise the opponent would not have obtained this evidence.

3.Mr Huber's declaration clearly states there is no corresponding DE patent application.  He also states that not one of the applications corresponding to application No. 551075 has been withdrawn or abandoned or finally rejected on the basis of lack of inventive merit.

4.The collection of the evidence‑in‑reply should not entail gathering a lot of evidence as the evidence‑

in‑answer was brief and to the point.  Some of the evidence‑in‑reply served on 12 April 1990 was not properly in reply.

5.VOGEL has had sufficient time to prepare its evidence‑

in‑reply and the present opposition proceedings are preventing GERBER from taking action against alleged infringers of its invention.

The 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, Australian 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;

(ii)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 Marsh said this is a complex case because GERBER had lodged, and then withdrawn, a request to amend the specification under section 77. The Office wrote to VOGEL's attorney on 15 March 1989 stating that the request to amend the specification had been withdrawn. Thus I think the request to amend the specification under section 77 may have complicated the preparation of the evidence‑in‑support of the opposition. But I cannot understand how this request can complicate the preparation of VOGEL's evidence‑in‑reply because VOGEL knew the request had been withdrawn before it served its evidence‑in‑support. Mr Marsh argued the nature of GERBER's evidence‑in‑answer had made the preparation of the evidence‑in‑reply more complex. He said, in his opinion, the declarations served on behalf of GERBER were not based on the broadest claims of the specification but were based on claims with a narrow scope. It seems to me VOGEL had some warning that GERBER may have considered the scope of the claims was too broad because the amendment proposed under section 77 was to delete the claims with the broadest scope. In any case I think VOGEL should have prepared the evidence‑in‑support of its opposition on the basis of all the claims not just on the basis of the claims with the broadest scope. Also, in my view, if GERBER's declarants have based their arguments on claims with a narrow scope this should simplify the preparation of VOGEL's evidence‑in‑reply. Both GERBER and VOGEL agree the technology of application No. 551075 is simple. Therefore I do not think this opposition can be compared to the complex case to which Mr Marsh referred (The Wellcome Foundation Ltd v Peptide Technology Ltd 14 IPR 567). Mr Marsh considers the amount of evidence filed in the present opposition is more than he expected to find in an opposition to a simple mechanical invention. But in my view the amount of evidence served in the present opposition is very much less than the evidence served in the opposition to a simple gold extraction process (Heinen and Others v Pancontinental Mining Ltd and Others 14 IPR 119 at page 129). I also note the present evidence refers to less citations than the evidence served in the case to which Mr Marsh referred (The Wellcome Foundation Ltd v Peptide Technology loc. cit). Therefore I do not consider that extensive evidence has been filed in the present opposition.
         I think the Commissioner's decision in the section 59 opposition may be assisted by the evidence which DISCOUNT has filed in the Federal Court.  I can also understand why VOGEL would like to obtain this evidence.  But VOGEL cannot obtain this evidence directly from the Federal Court because it is not involved in the proceedings.  Thus VOGEL has to obtain the evidence from one of the parties involved in the proceedings.  According to Mr Turner DISCOUNT co‑operated with VOGEL and supplied the Federal Court evidence which has already been served as part of the evidence‑ in‑reply.  Mr Marsh said VOGEL had difficulty obtaining this evidence.  Whatever the situation it seems to me I cannot allow an extension of time because VOGEL required some time to persuade one of the parties involved in the Federal Court proceedings to provide a copy of the evidence.  If I did extend the time on this basis I think it would then be possible for a party which is not involved in the present section 59 opposition, for example DISCOUNT, to indefinitely delay the proceedings.  Moreover this party would be able to cause the delay without having to justify this delay to the Commissioner.  I consider it is not in the public interest for a party, which is not involved in the present opposition proceedings, to be able to delay the proceedings.
         VOGEL has obtained copies of declarations and citations used in an overseas opposition and has obtained translations of these documents.  But Mr Marsh did not explain how this material would be useful in the preparation of evidence‑in‑reply in the present opposition.  It seems to me this material may be more relevant to further evidence rather than evidence‑in‑reply.  Therefore I consider the time spent obtaining and translating the evidence from this overseas opposition is not relevant to the present application for extension of time.
         VOGEL's attorneys require more time to establish what was common general knowledge in Australia in the art of adhesive backed vinyl webbing used for making signs.  GERBER considers VOGEL should have established what was common general knowledge in this art in the evidence‑in‑support.  According to Mr Marsh, the question of what was common general knowledge in this art was central to GERBER's evidence‑in‑answer in the present opposition.  I note the claim with the broadest scope in the specification of application No. 551075 is not restricted to adhesive backed vinyl webbing used for making signs, although this sort of material is defined in other claims.  I also note VOGEL's evidence‑in‑support mentioned this aspect of the invention but did not emphasise it.  Thus it seems to me VOGEL wants to reply to GERBER's criticisms in the evidence‑
in‑answer which emphasise this aspect of the invention.  Therefore I think VOGEL's efforts in trying to establish what is the common general knowledge in the art of adhesive backed vinyl webbing used for making signs are directed at the preparation of evidence‑in‑
reply.  Mr Marsh's letter refers to enquiries in libraries in Australia, discussions with experts in the art and correspondence with the publishers of certain overseas magazines.  GERBER considers VOGEL has had sufficient time to prepare its evidence‑in‑reply.  In particular Mr Turner suggested the reference to publishers of certain overseas magazines meant this involved further evidence rather than evidence‑in‑reply.  In my view the activities described in Mr Marsh's letter appear to be relevant to the preparation of evidence‑in‑reply.  There is no evidence in front of me to support Mr Turner's suggestion.  Mr Marsh said his client had been diligent and Mr Turner did not have any evidence which showed that VOGEL had not been diligent in the preparation of the evidence‑in‑reply.  I think VOGEL may take some time to establish what is common general knowledge in the art of adhesive backed vinyl webbing used for making signs.  In my view VOGEL has not yet had sufficient time to complete this task.
         Mr Marsh argued VOGEL was mounting a serious opposition to application No. 551075.  Mr Turner argued VOGEL is trying to delay sealing of a patent on the application because it manufactures and sells an infringing product.  I think Mr Turner's argument would have some force if VOGEL could gain an advantage by its actions.  However it seems to me GERBER can be compensated under section 118 for any infringing product which is sold before application No. 551075 is sealed.  In my view the evidence which VOGEL has lodged to date is prima facie relevant to the invention described and claimed in the present specification.  Therefore I consider that VOGEL is mounting a serious opposition to application No. 551075.
         Mr Marsh submitted that VOGEL's interests would be adversely affected if I did not extend the time and allow it more time to place all the available evidence before the Commissioner.  Mr Turner argued that GERBER's interests would be disadvantaged if I extended the time because of the large amount of infringing product being sold.  He also said it was in the public interest for the opposition to be settled as soon as possible so that the industry associated with the product knows where it stands.
Turning to the interests of the parties I note the opinion of Jenkinson J. (Kimberly‑Clark Ltd v Commissioner of Patents 13 IPR 551 at page 563) that very substantial weight ought not be accorded the circumstance that opposition proceedings may delay the grant of a patent. I again note GERBER may be compensated under section 118 for any infringing product which is sold before before the application is sealed. It seems to me the present opposition proceedings have been in progress for a considerable time without the public knowing the result of the opposition. On the other hand I think the public interest will be adversely affected if an invalid patent is granted on application No. 551075 because VOGEL was not allowed sufficient time to reply to GERBER's evidence‑in‑answer. VOGEL has served part of its evidence‑in‑reply and is preparing further declarations. Therefore, on balance, I think it is more in the public interest to allow VOGEL an extension of time to serve this evidence than risk an invalid patent being sealed on application No. 551075.
         The matters to be taken into account in deciding whether to allow an extension of time under regulation 57 are set out in regulation 83A.  The relevant part of regulation 83A reads as follows:

"the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case."

Thus, in my view, I have to consider other aspects of the case before deciding whether to allow VOGEL an extension of time.
         Mr Turner submitted that VOGEL's application should not be allowed because the circumstances and grounds contain a blatant fabrication.  He said there was no corresponding DE patent which had been successfully opposed.  Mr Marsh apologised for the error in the statement in his letter dated 17 May 1990 which reads "Corresponding opposition proceedings have taken place in West Germany".  He said he had written to a German associate seeking details of an opposition to a corresponding DE patent.  But he had now been informed the DE patent was the national phase of an EP patent which was being opposed before the European Patent Office.  Mr Turner conceded there was an opposition to the corresponding EP patent.  But he said the patent had not been rejected as a result of this opposition because the opposition had not been heard.
         It seems to me none of the above explains why the application for extension of time states that a corresponding patent application has been rejected when an application has not been rejected.  I also note that Mr Huber's declaration, which states none of the corresponding applications has been withdrawn or abandoned or finally rejected on the basis of inventive merit, was sent to Mr Marsh about one week before the date of the hearing.  Thus VOGEL has had an adequate opportunity to provide an explanation for the inaccuracy of the statement in the extension of time application.  But I also note Mr Marsh said at the hearing that the reference to the overseas opposition only formed a small part of VOGEL's case for an extension of time.
         It seems to me the statements which are made in the application for extension of time should outline the reasons why VOGEL is seeking a favourable exercise of the Commissioner's discretion.  I think these statements should be accurate because the Commissioner may exercise the discretion solely on the basis of these statements, for example if GERBER had not opposed the extension of time.  Therefore I consider the accuracy of the statements made in the extension of time application is a circumstance which is relevant to the question of whether I should allow VOGEL an extension of time.
           The inaccurate statement that an overseas patent corresponding to application No. 551075 has been rejected does not attempt to conceal something which is unfavourable to VOGEL's application for extension of time.  In my view the inaccuracy in the statement is an attempt to show there is evidence available overseas which must be relevant to the present opposition.  Earlier in this decision I found this evidence was not relevant to VOGEL's application for extension of time.  Thus the inaccuracy would have had no effect on the exercise of the Commissioner's discretion even if I did not know the statement was inaccurate.  Therefore I consider I should not disallow VOGEL's application for extension of time because of the inaccurate statement in the application.  Consequently I allow VOGEL an extension of time to 14 July 1990 in which to serve its evidence‑in‑reply.

         On 13 July 1990 VOGEL lodged a further application for an extension of time to 14 October 1990 to serve evidence‑in‑reply.  The circumstances in which, and the grounds upon which the application is made read as follows:

"The completion of a leading Statutory Declaration by Mr Richard McLoughlin is in hand and will be served on the applicant in the near future.

The translation of the documents lodged in opposition to the corresponding West German patent application took considerably longer than expected.  Copies of the citations raised by the West German Opponents have been studied and are presently being incorporated into an appropriate Statutory Declaration.

In addition, it is only recently that several items of evidence lodged in the Federal Court infringement action, based on the divisional petty patent, have been brought to the attention of the Opponent for the first time, by the Applicant.  Obtaining copies of this evidence has proved difficult and further time is required to study this new evidence which may be incorporated into the Opponent's Evidence‑in‑Reply.

It is clear from the evidence on file that this Opposition if (sic) both serious and complex and the Opponent requires further time to complete the Evidence‑

in‑Reply."

I think it is apparent from my findings earlier in this decision that not all these circumstances and grounds are relevant to this further application for extension of time.  I allow GERBER 14 days from the date of this decision to lodge an objection to the application for extension of time until 14 October 1990.
         I note that on 18 July 1990 Mr Turner lodged a number of documents accompanied by a letter which, in part, reads as follows:

"we undertook to provide copies of the Affidavits filed in respect of the Federal Court proceedings relevant to the petty patent divided from this application.

Several of the Affidavits were placed on file via the opponent's part evidence in reply.

There is also attached hereto a Declaration by the undersigned regarding two further affidavits which are being prepared by Williams Niblett and which will be filed in respect of the Federal Court proceedings."

Mr Marsh informed me that Mr Turner had also sent him some documents which appeared to be affidavits before the Federal Court.
Costs
Mr Marsh submitted that VOGEL was entitled to its costs because it had given GERBER written reasons supporting its application well before the date of the hearing (cf Albright and Wilson Ltd v Colgate Palmolive Co 9 IPR 669 at page 672). Mr Turner argued that GERBER was entitled to its costs, irrespective of whether I allowed the extension of time, because VOGEL's application lacked candour concerning the overseas opposition.
         I have allowed the extension of time but I have done so on the basis of the explanation given in Mr Marsh's letter which was lodged on 17 May 1990 rather than the circumstances and grounds given in the application itself.  This explanation was available to GERBER well before the date of the hearing.  But Mr Turner said GERBER considered it was essential to attend the hearing so the Commissioner could make a decision based on the correct facts.
         Earlier in this decision I stated that the statements made in VOGEL's extension of time application should be accurate.  According to Mr Huber, who is a US patent attorney in charge of GERBER's patent matters, the statement concerning the corresponding overseas opposition is inaccurate.  Thus I think GERBER was justified in opposing the application irrespective of the other circumstances and grounds given in the application.  According to Mr Marsh the statement concerning the corresponding overseas opposition was based on information from an overseas associate.  But Mr Marsh admitted that VOGEL had received Mr Huber's declaration one week before the date of the hearing.  In my view this gave VOGEL sufficient time before the hearing to investigate the situation concerning the corresponding overseas opposition.  Thus I think GERBER was justified in maintaining its opposition to the extension of time until VOGEL explained the inaccurate statement in the application.  VOGEL only attempted to provide an explanation at the hearing.  Therefore I award costs to GERBER.

(M. KENDALL)

Patent attorney for the applicant: Spruson & Ferguson