Grant Fisher v Apple Inc
[2013] APO 1
•8 January 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Grant Fisher v Apple Inc [2013] APO 1
Patent Application: 2009204252
Title:Portable multifunction device with interface reconfiguration mode
Patent Applicant: Apple Inc.
Opponent: Grant Fisher
Delegate: Ranganath Subbarayan
Decision Date: 8 January 2013
Hearing Date: Written Submissions completed on 30 November 2012
Catchwords: PATENTS – extension of time serve evidence in support – reasonable explanation of the delay – interest of parties and public interest favour extension – extension allowed – costs awarded against applicant
Representation: Patent applicant: Freehills
Opponent:Ashurst
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009204252
Title:Portable multifunction device with interface reconfiguration mode
Patent Applicant: Apple Inc.
Date of Decision: 8 January 2013
DECISION
I allow an extension of time until 27 January 2013 to serve evidence in support.
I award costs according to Schedule 8 against the applicant Apple, Inc.
REASONS FOR DECISION
Background
Patent application 2009204252 in the name of Apple Inc. (the applicant) was advertised as accepted on 27 October 2011. The claimed invention relates to user interfaces on computing devices with touch-sensitive displays with particular reference to portable electronic devices such as mobile phones.
On 27 January 2012, Grant Fisher (the opponent) filed a notice of opposition to grant of a patent. The Statement of Grounds and particulars was served on 27 April 2012.
Following one extension of time, evidence in support was due to be served by 27 October 2012. On 20 October 2012 the opponent applied for an extension of time until 27 January 2013 to serve their evidence. The applicant objected to the extension of time on 8 November 2012 and requested a hearing.
A hearing was conducted by written submissions. Submissions from the opponent were received on 23 November 2012 and submissions in response were received on 30 November 2012. Submissions from the applicant were received on 23 November 2012 and submissions in response were received on 30 November 2012. The applicant was represented by Freehills. The opponent was represented by Ashurst.
Partial evidence in support comprising copies of the documents mentioned in the Statement of
Grounds and particulars has since been filed on 20 December 2012.Reasons for the extension of time
The reasons for the first extension of time is as follows:
“The Opponent has made very good progress in discussions with a potential expert declarant and the preparation of the Opponent's evidence-in-support.
The potential declarant has had periods of leave and professional commitments overseas during the previous three months which have created difficulties in preparing and further advancing the declaratory evidence. The Opponent therefore requires an extension of time to advance this declaration and other evidence-in-support.
Accordingly, the Opponent respectfully requests an additional three month period in order to:
(a) Continue to prepare and hopefully finalise the above declaration of the above potential declarant; and
(b) Continue the preparation of the Opponent's evidence-in-support of this opposition matter, including preparing further declarations of the declarant and any further necessary declarations of other witnesses.”
The reason for the current extension of time is as follows:
“The Opponent has made very good progress towards preparation of the evidence-in-support and has had continued discussions with a potential expert declarant and the preparation of the Opponent's evidence-in-support.
The potential declarant has had further periods of leave and unavoidable professional commitments overseas during the previous three months which have created difficulties in preparing and further advancing the declaratory evidence.
The Opponent therefore requires an extension of time to advance the declarations and other evidence-in-support.
Accordingly, the Opponent respectfully requests an additional three month period in order
to:(a) Continue to prepare the above declarations of the above potential declarants; and
(b) Continue the preparation of the Opponent's evidence-in-support of this opposition matter, including preparing further declarations of the declarant and any further necessary declarations of other witnesses.”
The relevant law
Regulation 5.10(2) of the Patents Regulations 1991 gives the Commissioner the power to extend the time for serving evidence in support. 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)), has given the parties 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 considerations. (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)
Explanation of delay
As part of their submissions for the hearing, the opponent has filed a Statutory Declaration by Mr Fisher in which he has provided further explanation for the delay and also the progress that has been made to date in preparation of their evidence.
One of the main reasons put forth by the opponent is that the expert declarant is in full-time employment and has significant teaching and research commitments which limit the expert’s availability to attend meetings and assist in the preparation of evidence. According to their written submissions these commitments include teaching two coursework subjects, examining one PhD thesis, supervising four research students and leading three research projects. The expert has also had around two weeks leave in late September and early October.
The applicant argued that an expert’s competing commitments cannot be used as a reasonable excuse for an extension of time and referred me to the decision in Minproc Technology Pty Ltd, v Commonwealth Scientific and Industrial Research Organisation (1996) 35 IPR 48, where the delegate held that:
“It is not unusual for expert declarants to have ongoing work commitments. It is the responsibility of the party seeking the expert comment to ensure that such comment can be provided within the time periods stipulated.”
The opponent on the other hand has submitted that in the Minproc case, the expert was employed by the opponent and therefore the expert’s work commitments were within the control of the opponent. They have argued that in the present instance the evidence they are seeking to adduce is from an independent expert and that the opponent has no control over their work commitments.
They drew my attention to Telstra Corporation Limited v Overture Services, Inc (2006) AIPC 92~178, in which the Delegate recognised that
“evidence, in the form of statutory declarations from appropriately skilled practitioners in the relevant industry(s), to establish the disclosure of an anticipatory document or the state of the common general knowledge, years prior to the priority date of the accepted patent claims, is also notorious for taking considerable time" (at 18).
I tend to agree. The opponent’s submission clearly suggests that their expert declarant is an independent expert with significant other work commitments and I am therefore satisfied with this reason for the delay.
Another reason stated by the opponent is that in September it became apparent that they may need to engage further expert declarants and therefore further time is needed to locate and engage suitable experts in the field. They have also indicated that because of this they may need to seek further extensions of time. It is not uncommon for parties to file declarations from more than one expert declarant in order to provide greater support for submissions in relation to common general knowledge and also to cover different aspects of technology of the claimed invention. However I am a bit concerned that it has taken the opponent over four months to realise that they require these further declarants. While the request for the extension did not provide any information as to what progress has been made in relation to the engagement of these additional experts, in their submissions in response the opponent has indicated that they are taking steps to retain two other expert witnesses. It would therefore appear that some progress has been made at least in relation to identifying two further declarants. Although I have some concerns I am reasonably satisfied with this additional reason for the extension.
The interests of the parties
The applicant has submitted that the applicant is a pioneer in the field of portable multifunction devices and that patents are a vital aspect of their business. They have also pointed out that the opponent appears to be a patent attorney with little or no real interest in the field of the invention.
The opponent on the other hand has submitted that if the extension was not granted, they would be denied the opportunity of presenting its case in full and would be effectively shut out of the opposition. They also referred me to Schering-Plough Animal health Limited v Crompton Corporation (2004) AIPC 91-933 where the delegate noted that "the total absence of evidence to date means that there will be no case to answer on several grounds if the extension is not given" (at[12]).
The opponent has also argued that the standing of the opponent is not a relevant consideration and I agree. Regulation 5.3(1) clearly permits any person to oppose the grant of a patent.
The opponent has the onus of proof and clearly cannot make its case without proper evidence in support. The partial evidence in support that they have since served comprises copies of documents and videos that they intend to rely on and these cannot be admitted as evidence unless the extension is granted. While I accept that it is in the applicant’s interest to have an early determination as to the validity of their patent rights, they have not provided any further details as to what further prejudice they would suffer if the extension were to be granted. Although the interests of the parties are opposing, at this stage in the opposition proceedings, the interests of the parties clearly favour the grant of the extension.
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, 438; IPR 225-6). The opponent’s submissions indicate that the evidence of the expert declarant will address the state of common general knowledge in the art in Australia and also deal with the grounds listed in the statement of grounds and particulars. They have also argued that the invention is in the field of computing and portable electronic devices and includes technical terms which require explanation.
I am of the view that in a rapidly developing technology like portable electronic devices it can be difficult for the hearing delegate to identify what was common general knowledge in the art at the relevant date and this is where the evidence of expert declarants can be crucial. It is therefore likely that the evidence of the opponent’s expert declarants can be important in deciding on the grounds of inventive step and lack of clarity.
While the public interest also requires that the opposition is resolved expeditiously, given that this is only the second three month extension requested by the opponent, in my view this requirement is outweighed by the need to have evidence in relation to common general knowledge. The public interest favours the extension.
Conclusion
I have found that the opponent has provided a reasonable explanation for the delay. The interests of the parties and the public interest also favour the extension. I therefore grant an extension of time until 27 January 2013 for serving evidence in support.
Costs
Costs normally follow the event. In the present case, the opponent has been successful. I see no reason depart from the normal approach. I award costs according to Schedule 8 against the applicant Apple, Inc.
Ranganath Subbarayan
Delegate of the Commissioner of Patents
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