Gliderol International Pty Ltd v Frenchporte, L.L.C

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2003209110 in the name of Frenchporte, L.L.C.

Title: Overhead Garage Door With Decorative House Façade Elements

Action: Request under Regulation 5.5 for dismissal of an opposition by Gliderol International Pty Ltd

Decision: Issued 29 January 2008
Abstract

No particulars were provided in relation to the grounds of opposition relating to subsection 40(2) and subsection 40(3). Consequently these grounds were dismissed.
The particulars in relation to the other grounds of opposition provided material facts, and these grounds were not dismissed.
Further and better particulars discussed, but considered to be unnecessary.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2003209110 in the name of Frenchporte, L.L.C. and a request for dismissal of an opposition by Gliderol International Pty Ltd

BACKGROUND

Patent application number 2003209110 in the name of Frenchporte, L.L.C. (hereafter referred to as Frenchporte) was opposed by Gliderol International Pty Ltd (hereafter referred to as Gliderol), and a statement of grounds and particulars was served on 26 October 2007. Frenchporte requested dismissal of the opposition on 23 November 2007.
The matter was heard in Canberra on 13 December 2007. Frenchporte advised that they did not wish to appear at the hearing. They relied solely on the written submissions filed with their request for dismissal on 23 November 2007. Gliderol was represented by Mr T. Melville, patent attorney of Madderns, Adelaide, who attended the hearing by telephone.
DECISION
The law on dismissal of an opposition
Dismissal of an opposition is provided for by regulation 5.5 of the Patents Regulations as follows:
5.5 (1) An applicant may:
(a) within 1 month of being served with a copy of a statement by an opponent under paragraph 5.4(a); or
(b) if the complete specification in relation to an opposed application is re-examined under subsection 97(1) of the Act - within 1 month from the day when the re-examination is completed under regulation 9.5;
request the Commissioner in the approved form to dismiss the opposition.
(2) As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.
(3) The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.
In the present case the request for dismissal was made within one month of being served with a copy of a statement by the opponent. The Commissioner informed Frenchporte of the request on 28 November 2007. Consequently the procedural prerequisites for dismissal have been satisfied.
In Stack v Commissioner of Patents [1999] FCA 148 the Federal Court approved the use of the approach laid down in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129:
"[T]he plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his lack of a cause of action - if that be the ground on which the court is invited, as in this case, 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'."
It follows that an opposition to the grant of a patent can be dismissed if it is clear that the opposition cannot succeed. It is the established practice of the Commissioner that an opposition can be dismissed either in whole or in part (see L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v Commonwealth Industrial Gases Ltd (1991) 24 IPR 77).
The question of when an opposition cannot succeed is determined by considering the statement of grounds and particulars, which briefly outlines and circumscribes the case for the opponent. The statement identifies the material facts necessary for the particular grounds of opposition (see Mobay Corporation v The Dow Chemical Company (1992) 24 IPR 379). Where the statement of grounds and particulars does not disclose an arguable ground of opposition, then it may be appropriate to dismiss the opposition.
The material facts relevant to various grounds of opposition are discussed in E I DuPont de Nemours and Company v DowElanco (1994) AIPC 91-067. Relevantly to the present matter, the following observations were made by the hearing officer:
·for manner of manufacture, a brief description of the particular type of manner of manufacture, eg. a mere mixture of known ingredients, together with brief details of material facts to establish a prima facie case;
·for matters such as prior knowledge, sale, prior use, a brief description of their relevance to the ground together with a brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the invention was allegedly disclosed or sold;
·for documents, the relevance of the reference to the ground together with page and line references to direct the reader to the specific part of the document that is to be relied on. Also, where patent documents have been published in more than one version, then the version being relied on should be identified and if reference is made to patent family members then material facts relevant to the family member should also be clearly identified;
·for common general knowledge, a brief description of the alleged common general knowledge and identification of the person skilled in the art including brief details of any material facts needed to establish a prima facie case;
·for section 40 matters, a brief description of the specific subject matter causing section 40 not to be satisfied, a clear statement of the specific statutory requirement and the identification of the deficient part of the specification (by reference to page and line and/or claim numbers). In L’Air Liquide, supra, the Assistant Commissioner stated in relation to section 40 matters: “I do not consider a mere enumeration of the requirements of the Act to be sufficient statement of particulars; rather, the statement of particulars should identify the specific deficiencies in the specification that give rise to the ground of objection”
The present matter raises the issue of the relationship between dismissal and further and better particulars. As I pointed out in Mobay v Dow, supra at 394, where a material fact is specified but with insufficient detail, that may be remedied with further and better particulars. However, when a material fact is not specified at all, then it is appropriate to dismiss the ground. The focus is solely on the material facts.
The request for dismissal
The application for dismissal filed by Frenchporte states as follows:
In response to the Statement of Grounds and Particulars filed with our office on 26 October 2007 we hereby request dismissal of the opposition pursuant to Reg 5.5(1).
Consideration of the grounds and particulars of the opposition
In the statement of grounds and particulars, five grounds of opposition are identified. As I have been asked to dismiss all grounds of opposition, I will deal with each ground individually.
Ground 1: That the invention is not a patentable invention because it does not comply with Section 18(1)(a).
Lack of manner of manufacture is particularised on the basis that the invention:
1.1does not meet the threshold requirement of an invention
1.2is merely the incorporation of a known material (light-transmitting panels) into a conventional and well-known overhead garage door
1.3defines a merely collocation of known integers producing no overall different result to what would be expected from combining these known integers
Frenchporte asserted that the particulars lack any material facts which support a prima facie case, are no more than a general statement of the law, are devoid of specifics and it is unclear what case the opponent intends to argue. However, Mr Melville argued that Gliderol has provided the material facts to establish a prima facie case i.e. ‘incorporation of a known material (light-transmitting panels) into a conventional and well-known overhead garage door’ and there should be no ambiguity on the part of the applicant as to the material facts referred to in the statement of grounds and particulars.
It is clear that particulars 1.2 and 1.3 enumerate a brief description of the particular type of manner of manufacture, together with brief facts. I consider that the particulars clearly satisfy the guidelines in DuPont v DowElanco, supra. There is no basis to dismiss this ground of opposition.
Ground 2: That the invention is not a patentable invention because it does not comply with Section 18(1)(b)(i).
The particulars state that the invention so far as claimed in the opposed patent is not novel when compared to the prior art base as it existed before the priority date of the claims. Specifically, the particulars state:
2.1 The following Acts are considered to be relevant to the novelty of the claims:
[Garage doors installed in Australian locations in the year 2000; garage doors technical manual distributed in the year 2000; manufacturing, use, public disclosure, sell, and distribution of garage door before 2002; and a foldaway door manufactured and installed in Adelaide in mid 2000 designated as (a)-(d) are then listed.]
2.2The following publications are considered to be relevant to the novelty of the invention as claimed:
[Three patent specifications and two internet web pages designated as (a)-(e) are then listed.]
Ground 3: That the invention is not a patentable invention because it does not comply with Section 18(1)(b)(ii).
The particulars state that the invention so far as claimed by any claim in the application, does not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims of the patent being opposed. Specifically, the particulars state:
3.1 The publications referred to above under the heading “2 Section 18(a)(b)(i)” are considered to be a non-exhaustive list of prior art being part of the prior art base. In addition, the following documents are a non-exhaustive list of further documents that are relevant for the purpose of establishing a lack of inventive step:
[Four patent specifications designated as (a)-(d) are then listed.]
The person skilled in the art is considered to be an Industrial Designer or a Mechanical Engineer having experience in the design of garage doors.
3.2 Common General Knowledge
The common general knowledge in the art as it existed in the patent area before the alleged priority date of the claims of the opposed patent includes, but is not limited to, the following:
[Nine examples of common general knowledge are then listed.]
Regarding Ground 2 and Ground 3, Frenchporte asserted that the statement made a reference to a “non-exhaustive” list of 13 prior art documents. No version, page or line references have been provided and it is unclear what parts of the documents are being relied upon. The expression “non-exhaustive” is unclear and unhelpful, as it fails to establish the full case the applicant has to answer. Frenchporte further stated that the reference at particular 2.2(e) is a link to a web page currently exhibiting five garage doors and that the opponent has failed to specify if only one or all five, of the doors on this page are alleged anticipations.
Mr Melville directed me to Imperial Chemical Industries Plc v Irenco Inc [1993] 26 IPR 154 and argued that in the present case the number of cited documents is between seven and ten, and the degree of particularisation required depends upon the length of the cited documents. As the cited documents are each ten pages or less inclusive of drawings, further particulars specifying page and line referencing would be inappropriate in this case. He also submitted that entire documents under item 2.2 are relevant to the ground of lack of novelty, which is apparent on view of these documents, and their disclosure is not sufficiently burdensome to warrant specifically identifying relevant sections by page and line reference. Mr Melville also indicated the length of each of the documents relied upon as relevant to lack of inventive step and argued that length of these documents is not sufficiently burdensome to warrant specifically identifying relevant sections by page and line reference.
All of these submissions seem to be directed to the issue of further and better particulars, rather than to dismissal. Clearly material facts have been provided - citations and common general knowledge are identified - so there is no basis for dismissal. That is enough to dispose of the matter. However, in order provide some assistance to the parties I will briefly consider the issue of further and better particulars.
The documents particularised do not provide any version, page or line references. The Commissioner will order further and better particulars in relation to a long list of documents (ICI v Irenco, supra) where the facts of the case warrant the direction. The overriding consideration must be whether the applicant can reasonably be expected to understand the case presented. In the present case, it has not been demonstrated that there is any unreasonable difficulty presented by the way the documents have been particularised. A cursory inspection shows that the documents are of short length. I am not satisfied that further and better particulars would be appropriate.
The use of the expression “non-exhaustive list of prior art” in the statement of ground and particulars as raised by Frenchporte in their submission, deserves some consideration. The wording is indefinite, and potentially introduces some element of ambiguity. However, in context the term presents no difficulties, as the ground of opposition is limited to those documents that have been specifically particularised.
I am also satisfied that particulars describe the common general knowledge in sufficient detail to inform the applicant of the case to be met. In view of the above, I conclude that the inadequacy of the particulars has not been made out in regard to Ground 2 and Ground 3 of opposition by the applicant.
Ground 4: That the specification filed in respect of the complete application does not comply with Section 40(2).
Ground 5: That the specification filed in respect of the complete application does not comply with Section 40(3).
No particulars have been provided in respect of Grounds 4 and 5 of the opposition. Clearly the opponent has not provided any material facts relevant to these grounds.
Mr Melville made submissions as to why particulars had not been provided, and these submissions deserve to be answered. Mr Melville argued that these grounds could not be particularised because “evidence adduced from a suitably skilled expert is required to make a determination of whether the invention is described fully and whether the claims are fairly based on the specification as construed by the person skilled in the art.” Whether the opponent will maintain objection to the full description of the invention or the fair basis of the matter described in the specification depends upon the interpretation of the specification by a person skilled in the art. This suggests that the opponent had not yet decided the full extent of its opposition, which is clearly inconsistent with the purpose of the statement of grounds and particulars. Mr Melville conceded that “the opponent does not intend to take any opposition to the description of the best method of performing the invention, or to the clarity or succinctness of the claims.” Clearly the opponent is aware of the details of its opposition under these grounds, and could have provided that information in the statement of grounds and particulars.
Mr Melville further argued that the material facts defining the case that the applicant must answer are contained within the disclosure of the specification as a whole, and are therefore available to the applicant. While it is possible to forensically analyse the specification and identify possible particulars of the opposition, this does not meet the requirement of the Regulations. The statement of grounds and particulars must explain the case of the opponent, and not merely set a puzzle for the applicant.
Mr Melville expressed Gliderol’s willingness to amend the particulars under Grounds 4 and 5 of the opposition. I indicated to him that the option of amending particulars was not available to the opponent while an application for dismissal of opposition was being considered (regulation 5.9(2)). Alternatively, Gliderol suggested that they could provide further and better particulars of these grounds. Further and better particulars are not appropriate where material facts have not been provided, as the insertion of the material fact would clearly change the case that the applicant has to answer. This is not a case where it is appropriate to consider directing further and better particulars. Given the conclusion that I have come to, I have not turned my mind to any issues of natural justice that would be raised by such a direction.
I find that Ground 4 and Ground 5 are no more than extracts from Section 40 itself, and have not been particularised at all. It is appropriate to dismiss these grounds.
CONCLUSION
Grounds 1, 2 and 3 of the opposition stand. I dismiss Grounds 4 and 5 of the opposition.
I direct that the time for Gliderol to serve evidence in support of their opposition, in accordance with regulation 5.8, expires three (3) months from the date of this decision.
COSTS
The award of costs is a discretionary matter. Frenchporte have been partly successful in their request for dismissal of the opposition. However, Gliderol have been successful in maintaining most of the grounds of opposition. In my view, each of the parties should bear their own costs. Therefore, I make no award of costs.
Dr S. D. Barker
Delegate of the Commissioner of Patents
29 January 2008
Patent attorneys for the applicant : Pizzeys, ACT
Patent attorneys for the opponent : Madderns, Adelaide

[2008] APO 4

28 January 2008