IGT v Aristocrat Technologies Australia Pty Ltd - [2007] APO 27

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 760617 in the name of IGT

Title: Method for Awarding Variable Bonus Awards to Gaming Machines Over a Network

Action: Request for an extension of time to serve evidence in answer by IGT and an objection thereto by ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD

Decision: Issued 23 August 2007 .
Abstract

On balance, taking into account IGT’s actions since receiving the letter from the Commissioner making plain her displeasure at IGT’s lack of progress, the explanation justifies an extension of time.
IGT would be disadvantaged if the extension of time was not granted as they would not be able to fully state their case against the opposition. There seemed to be no specific prejudice that Aristocrat Technologies Australia Pty Ltd would suffer. On balance, the interest of the parties supports granting the extension.
IGT was given the benefit of the doubt that evidence to be filed would differ from that already filed. The conclusion, made with great hesitation, is that it is in the public interest to grant the extension to allow the filing of this evidence.
Taking all relevant considerations into account, the requested extension of time until 6 September 2007 is allowed.
However, in line with previous decisions, the Commissioner would expect that greater effort would be expended in preparing evidence as more time went on. If this did not occur it would be the case that the Commissioner would become less sympathetic to granting extensions as time went on.
IGT is also put on notice that any further extensions would also be contingent upon IGT clearly delineating the differences between the evidence sought to be served and that already served.
Each party is to bear its own costs in this matter.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 760617 by IGT and a request for an extension of time to serve evidence in answer by IGT and an objection thereto by Aristocrat Technologies Australia Pty Ltd.

BACKGROUND

Patent application 760617 in the name of IGT was filed on 25 June 1999 as 36763/99 for an invention titled “Method for Awarding Variable Bonus Awards to Gaming Machines Over a Network”. The application was advertised accepted on 22 May 2003 and on 21 August 2003 Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) filed a notice of opposition. A Statement of Grounds and Particulars followed on 21 November 2003 and evidence in support was completed on 6 June 2005 following 6 extension of time, one of which was objected to by IGT (see Aristocrat Technologies Australia Pty Ltd v Acres Gaming, Inc [2005] APO 27).
IGT had requested, and been granted, 7 extensions of time up until 6 June 2007 to serve evidence in answer. Part of IGT’s evidence in answer was served on 13 December 2006. This evidence consisted of a declaration by Phillip Charles Dimond with annexures PCD-1 to PCD-3.
On 6 June…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read IGT v Aristocrat Technologies Australia Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2007] APO 27
Decision Date: 23 August 2007

CaseChat Overview and Summary

The decision in IGT v Aristocrat Technologies Australia Pty Ltd involves an application by IGT for an extension of time to serve evidence in answer in relation to a patent application for a “Method for Awarding Variable Bonus Awards to Gaming Machines Over a Network.” Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) objected to the extension. The case was heard by a delegate of the Commissioner of Patents who granted the extension. IGT had previously been granted seven extensions of time, all of which were granted on the basis of explanations provided by IGT. The reasons for the present extension were similar to those previously provided. IGT had difficulty in obtaining expert evidence on the common general knowledge of the relevant field and had to engage several experts to cover for those who were unavailable. The Commissioner had previously expressed her displeasure at IGT’s lack of progress in preparing evidence. Since that time, IGT had been more diligent in preparing evidence. The Commissioner found that the explanation justified an extension of time. IGT would be disadvantaged if the extension was not granted because they would not be able to fully state their case against the opposition. Aristocrat did not provide evidence that they would be prejudiced by the extension. The Commissioner was prepared to give the benefit of the doubt to IGT and concluded, with great hesitation, that it was in the public interest to grant the extension to allow the filing of this evidence. Each party was to bear its own costs in this matter.

Orders