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 2007 IGT requested another extension of time to 6 September 2007 and Aristocrat objected to this extension.
The request for the extension of time and the objection thereto was heard in Canberra on 20 July 2007. IGT was represented by Mr Richard McCormack of counsel and Mr Boris Golja, patent attorney of Wary & Associates, Perth. Aristocrat was represented by Roger Henning and John Dower, patent attorneys of Freehills Patent & Trade Mark Attorneys, and Kieran Power, patent attorney for Aristocrat. Both parties appeared by telephone.
RELEVANT LAW
The time for serving evidence in answer of an opposition is 3 months from the date of serving the evidence in support (regulation 5.8). This time can be extended under regulation 5.10(2):
(2)The Commissioner may:
(a)on the application of a party in the approved form; and
(b)on such reasonable terms (if any) as the Commissioner specifies:
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5):
(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 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, and extension of time or the serving of evidence is appropriate in all the circumstances.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the opponent has been notified, and both parties have been given the opportunity to make representations.
An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate in all the circumstances. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. The general principles that flow from these decisions are:
a)The power is discretionary:    Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. 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)
b)Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247). It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
c)The public interest:     The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
*         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
*         The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*         The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
PREVIOUS EXTENSIONS
As noted above IGT has been granted 7 previous extensions. It is instructive to broadly outline the reasons for these extensions and other actions taken during the time.
The first extension
IGT (then Acres Gaming Inc) gave reasons that they needed more time due to the volume of evidence in support. They also indicated that they had identified two expert witnesses who had indicated that they would be prepared to provide evidence in this matter and two others who had not yet provided replies to IGT’s requests. IGT needed time to determine the suitability of these witnesses.
The second extension
IGT gave reasons that they had reviewed the evidence in support and had uncovered issues that needed expert assistance prior to formally briefing expert witnesses. IGT also indicated they had identified expert witnesses, two of whom had agreed to act as experts. Of the others, one had not agreed to act and another had not replied. IGT also stated that they had identified two additional experts and were in preliminary discussions with one of them to decide whether they could provide the expert comments sought. There was also some delay due to a transition taking place in management of the applicant’s IP following the acquisition of Acres Gaming Inc by IGT.
Following notification of this request for an extension of time Aristocrat wrote indicating that, while they did not formally object to the request, they had concerns with the apparent lack of progress by IGT in preparing evidence. In particular they pointed to the situation that IGT had apparently procured the services of two experts but appeared to have made no progress with them in the three months preceding this request. They also highlighted the fact that IGT was still waiting for an answer from another expert which was also the situation three months ago. Furthermore, Aristocrat questioned why IGT was seeking experts to provide expert assistance before briefing other experts to provide expert evidence. They indicated that this seemed an unnecessary delay. Aristocrat also comment that IGT seemed to be taking a long time (more than 6 months) to review the evidence in support when it only consisted of two statutory declarations. Finally Aristocrat questioned the delay caused by the acquisition of Acres Gaming Inc by IGT given that the acquisition took place more than two years previously.
These comments were received by the delegate on 22 December 2005. As the extension of time had been granted on 21 December 2005, they were not referred to by the delegate in making the decision to grant the extension. They were placed on the file.
The third extension
IGT stated that a questionnaire on aspects of the common general knowledge was being prepared to be sent to the experts for answers in the form of a declaration. Further declarations would follow to sequentially develop the evidence in answer to avoid the problems with experts who give evidence after seeing the specification (see Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd 56 IPR 248 – referred to as 3M v Tyco hereafter). IGT also stated that the potential expert whom they had been waiting for a reply from had still not replied and they were proceeding on the basis that this expert would not be acting on behalf of IGT. IGT also stated that the experts they were looking to retain to provide expert comment were not suitable and they were going to ascertain whether other experts were available to supplement the experts already retained.
The fourth extension
The explanation stated that the questionnaire had been sent to the two experts for answer. While responses had been received from both experts, the second expert had been constrained in his ability to devote time to the questionnaire due to work commitments. Upon review of the responses conferences had been, or were to be, held on aspects requiring further comment highlighted by the answers. Time was required to receive those comments. IGT maintained that the evidence being sought was highly relevant as the information on common general knowledge being sought was typically not available during examination, particularly given the 8 year gap between the priority date and the present time. Further declarations were also going to be filed once the declarations on the common general knowledge had been filed (thereby avoiding the issues raised in 3M v Tyco).
The fifth extension
IGT gave reasons that, despite reminders, further comment from the second expert had not been received following the conference referred to in the previous request and further time was required to receive these comments. Further comments from the first expert had been received and the declaration was under preparation but a family medical emergency meant that he had been absent. IGT again indicated that they were still intending to provide the evidence in support to the experts once they had commented on the common general knowledge.
The delegate granted this request for an extension of time but noted the following:
“The Commissioner is concerned that this request is the fifth request from the applicant for an extension of time and will bring the time given to the applicant to file the evidence in answer to 18 months. There has been no evidence filed so far and no progress appears to have been made in relation to the comments from the second expert. Further material including the alleged prior art specifications have not yet been provided to the two experts and there is no indication that the evidence of the two experts will be completed within the extended time requested. I agree with the opponent that the applicant does not appear to have shown due diligence in the preparation of the experts' evidence. The Commissioner must consider not only the private interests of the parties involved in the opposition, but also the public interest, by ensuring that proceedings are not unreasonably protracted.
Despite these concerns I advise that I have granted the current extension, but the applicant is on notice that the Commissioner is unlikely to be sympathetic to any further requests for extensions of time, unless the applicant can establish that there has been significant progress in the preparation of the experts' evidence and can commit to a deadline for its filing.”
The sixth extension
The reasons given for this request indicated that, following the filing of the declaration of the first expert (which occurred on 13 December 2006), patent specifications discussed in the evidence in support had been sent to the first expert for review and further time was needed for the review (repeating the same reason for this sequenced preparation of evidence). The reasons also indicated that the second expert had not provided the comments that had been sought due to commitments in providing evidence in another opposition involving the same two parties and because a family bereavement necessitated attention on domestic issues. Nevertheless, the second expert had indicated that a response would be filed shortly. The reasons also indicated that amendments were being formulated with a view to expediting and potentially settling the opposition.
The seventh extension
As before, the second expert had been reminded (again) to supply outstanding comments awaited from him and had (again) indicated a willingness to provide them. This disruption had caused IGT to seek other experts and a third expert had been identified to review and comment on the prior art that forms part of the evidence in support. A questionnaire had also been sent to this expert and the review of the prior art and response to the questionnaire was being undertaken. Although the third expert was moving cities, he had anticipated completion of his review in the near future. In addition, the first expert had been hampered in his review of the prior art by onerous professional obligations but expected to complete his review soon. Furthermore, while the amendments that had been mentioned in the previous request had not yet been filed due to the disruption of preparing evidence by the delay of the second expert, the draft set of claims had been prepared and sent to IGT and their US attorneys for consideration.
THE PRESENT EXTENSION
The explanation provided by IGT with their request for an extension of time contains much helpful detail. It is as follows:
“The circumstances in which, and the grounds upon which, this application is made are as follows:
1.Following the filing of the previous application for extension of time to serve evidence-in-answer, dated 6 March 2007, the response which was then awaited from the third expert witness, has been the subject of two separate reports dealing, respectively, with prior art in the form of US Patent 5655961 and US Patent 5333144. Patent attorney and client privilege is claimed in documents recording or evidencing each of these reports, pursuant to s.200(2) of the Patents Act 1990 (Cth), as well as all other confidential communications as referred to elsewhere herein.
First Expert Witness
2.The first expert witness, Philip Dimond, has made a declaration which is directed to common general knowledge issues. That declaration was served as part of the evidence in answer on 13 December 2006. The focus of the Dimond declaration is, however, by way of a general review, rather than a review as to particular aspects by way of specific comments. Whilst Mr Dimond had previously indicated that he anticipated completing his review and providing his response in relation to the questionnaire on extracts of the declaration by Mr Culley (from the opponent's evidence in support) concerning aspects of alleged common general knowledge, that has not transpired. That situation has arisen because of the nature and extent of his consultancy duties abroad, which in recent months have escalated and been unexpectedly heavy. As a result, he has not been able to devote the required time to assist in preparing the evidence. Due to the unavailability of Mr Dimond as an ongoing expert witness, it has been necessary for the applicant to search for a new expert witness for the preparation of this evidence. The applicant has been successful in locating a suitable fourth expert witness has and [sic] engaged that expert witness to provide this evidence.
Second Expert Witness
3.Given the circumstances concerning the unavailability of the second expert witness, as set out in the previous application for extension of time, the applicant's evidence is being developed on the basis that the second expert witness will not be available to undertake any further action in relation to preparation of the evidence in answer.
Third Expert Witness
4.The third expert witness advised the applicant's attorneys that he had experienced considerable difficulty in completing his review of the material and response to the questionnaire, the subject of his instructions, to ensure that the required aspects were addressed. Further, the second [sic] expert witness has sought assistance of the applicant's attorneys by way of further direction as to applicable legal principle to be applied on certain aspects of his review of the alleged prior art documents.
5.However, whilst the third expert witness has provided his response, by way of two separate reports dealing, respectively, with prior art in the form of US Patent 5655961 and US Patent 5333144, the third expert witness has yet to provide his initial review of three further prior art documents.
6.The issue of review of the prior art is related to the applicant's attorneys anticipated amendment of the specification and/or claims, with a view to taking into account any relevant prior art (relevance not conceded in any event). The intention to so amend has previously been foreshadowed to the Commissioner, and the opponent's attorneys, through previous extension of time application.
Fourth Expert Witness
7.The fourth expert witness who has been engaged on behalf of the applicant has been briefed to review certain specific issues of CGK not otherwise dealt with by the first expert witness (other than at a general level).
8.The fourth expert witness has received instructions from the applicant's attorneys, and is presently engaged in reviewing the questionnaire on, and extracts from, the declaration by Mr Culley (from the opponent's evidence in support) concerning aspects of alleged common general knowledge. He is expected to provide a report within the next two weeks, approximately, whereupon it will undergo review by the applicant's attorneys and considered for the purpose of drafting a statutory declaration.
Amendment
9.The status of the amendments as proposed to be made to the claims, as foreshadowed in the Applicant’s previous applications for extension of time, is that they are close to finalisation. Following the draft set of claim amendments, referred to in the previous application for extension of time, two further sets of draft claim amendments have been prepared and exchanged between the applicant's Australian and US attorneys. The latest set is presently with the applicant and the applicant's US attorneys for review and consideration.
Specific Issues
10. As referred to in the opponent's application for extension of time dated 23 May 2005:
The further evidence in support comprises a number of prior art specifications which are particularly relevant to the features governing the accumulation, payout and bonus periods of jackpot systems, and in particular, the concept of a decrementing jackpot. (underlining added)
11.As it is also the case that the opponent's allegations extend to the proposed patent application claiming certain features which are alleged to be not novel or inventive in light of the prior art, the nature and extent of issues raised by the opponent are both comprehensive and technical, encompassing a wide range of CGK and alleged prior art as at the priority date, including the following specific aspects, namely:
(a)       types of bonuses awarded on gaming machines and gaming machine networks;
(b)       nature and operation of bonuses and other awards on gaming machines;
(c)       availability of bonuses on gaming machines;
(d)       triggering of bonuses;
(e)       how bonuses were awarded;
(f)        funding of bonuses;
(g)       whether and how bonuses that were awardable were subject to change; and
(h)       information about a bonus that may be communicated to a player.
12.Each of the above aspects relate directly or indirectly to a concept of a decrementing jackpot.
13. Because of the constraints imposed by the decision of the Full Court of the Federal Court in Minnesota Mining &Manufacturing Cov Tyco Electronics PtyLtd (2002) 56 IPR 248 at [43]-[45] (3M v Tyco case), in relation to evidentiary issues, further time will be required to provide additional instructions to the third and, more particularly, fourth expert witness being required to review prior art documents.
14.In light of extensions of time previously sought and obtained by the opponent in relation to serving evidence-in-support of the opposition being put on the basis that its opposition to the patent application in suit being a serious one, it is important that the applicant be given the opportunity to provide expert commentary on evidence relating to the features of the present invention and the prior art, as outlined above. Such expert commentary will necessarily involve the complete body of prior art that is relevant to consider, and need to consider the CGK at the relevant time.
15.The applicant accepts that the public interest is a relevant matter, as far as the claims made in the present patent application being tested against the prior art base. For the reasons identified in the previous extension of time applications and hearings, the applicant refers to and relies upon the fact that it, as well as the opponent, has experienced considerable difficulty locating suitable expert witnesses in the field to which the present patent application, including the features of the invention, relates. Such difficulties are common to the field of art involved in relation to the present patent application. It is also material that such difficulties have been experienced by the opponent in the present opposition.
16.In conclusion, and by way of summary:
(i)the applicant refers to and relies upon the matters set out above in support of the application for extension of time;
(j)the fact of the proposed amendments to the present patent application and the claims thereof being a significant issue, as far as relevant prior art is concerned, and the need for the applicant's expert witnesses to have an adequate opportunity to review and provide comment on same, and statutory declarations be prepared by the applicant's attorneys accordingly;
(k)the unavailability of the various expert witnesses relied upon by the applicant, and over which the applicant has no control, as having seriously interfered with the applicant's inability to prepare its evidence-in-answer; and
(l)the applicant has been diligent in endeavouring to overcome the evidentiary difficulties and is well progressed in that regard.
17.We respectfully submit that it is entirely reasonable and equitable that the applicant be provided with more time in which to complete service of its evidence-in-answer.”
DECISION
Explanation of the delay

IGT’s submissions on this point were that the explanation justified an extension. In particular the withdrawal of their first expert, Mr Dimond, and the effective withdrawal of the second expert with the subsequent need to retain other experts caused the delays in the preparation of evidence. In support they referred to Dominion Mining Ltd v MIM Holdings Ltd and Highlands Gold Properties Pty Ltd [1997] APO 27 where it was stated:
“I accept the withdrawal of declarants, at this stage of proceedings, would cause significant disruption to the applicant's preparation of evidence-in-answer. This factor could entitle the applicant to an extension of time.”
IGT also submitted that, given the relatively specialised field of the invention, it had been difficult to locate experts. They also pointed to the same reason being used by Aristocrat to justify extensions of time when they were filing the evidence in support. They referred to General Electric Company v NEC Micon AS [2002] APO 42, British-American Tobacco Co Ltd v Philip Morris Ltd [1999] APO 80 and Acres Gaming Inc v Bally Gaming Inc [2005] APO 19.
Aristocrat in their submissions pointed to the significant time that IGT has taken to file evidence in answer and submitted that there seemed to be no prospect of the evidence being completed by the end of the current period. They pointed to the nine months or so that it took for IGT to review the evidence in support and develop a questionnaire for their experts and contrasted this with the preparation of the declaration of Edward Cully that forms part of the evidence in support. This declaration was signed on 6 June 2005 following Mr Culley’s engagement on 11 May 2005. Aristocrat submitted that this was a more feasible time frame compared to the 27 months (at least) that IGT is taking to file their evidence in answer.
They also submitted that while they used the same reasons regarding the difficulty in finding and retaining experts in their requests, it does not follow that the Commissioner must accept the same reason automatically. In this regard they also referred to British-American Tobacco Co Ltd v Philip Morris Ltd (supra).
Aristocrat also sought to distinguish the present circumstances from those of Dominion Mining Ltd v MIM Holdings Ltd and Highlands Gold Properties Pty Ltd (supra). They pointed to the statement in Mr Dimond’s declaration that he had been a consultant to IGT and, if it had been serious about progressing the opposition, IGT would have instructed Mr Dimond to allocate enough time to prepare evidence. They pointed to Minproc Technology Pty Ltd v Commonwealth Scientific and Industrial Research Organisation [1996] APO 29 and Mainline Corporate Holdings Limited v Fexco Dynamic Currency Conversion Limited [2006] APO 13 as supporting the position that it would be expected that employees would prepare evidence as a matter of priority. Aristocrat submitted that there was no suggestion in Dominion Mining Ltd v MIM Holdings Ltd and Highlands Gold Properties Pty Ltd (supra) that the expert was employed by the applicant.
Aristocrat also highlighted the fact that, despite being put on notice after the fifth request for an extension of time that the Commissioner expected to see significant progress in preparing evidence and commitment to a deadline for its filing, IGT did not make any such commitment in the present request.
I have some sympathy with Aristocrat’s submissions. It does appear as if IGT has not been diligent in preparing their evidence. Nevertheless it may not be as clear-cut as Aristocrat suggests.
While Aristocrat points to the speed with which their expert (Mr Culley) prepared his declaration and contrasts this with the pace of IGT’s preparation, it may well be that Mr Culley was able to turn his mind to the preparation of evidence and proceed quickly because his circumstances allowed him to do so. This does not appear to be the case with IGT’s experts. Nevertheless, I do take note of IGT’s conduct in reviewing the evidence in support and providing advice to their experts. As pointed out by Aristocrat, IGT took at least 9 months to review the evidence in support. It was submitted that this was an excessively long time. I agree. While IGT made mention of the need to sequentially develop their evidence to avoid the problems referred to in 3M v Tyco, as noted in Aristocrat Technologies Australia Pty Ltd v IGT [2007] APO 7:
“the fundamental vice with IGT’s submission is that it overlooks the expectation by the Commissioner that the parties to an opposition pursue the collection of their evidence with due diligence.”
However, a factor that is part of my considerations is the letter from the Commissioner setting out her dissatisfaction with the pace of IGT’s preparation.
Since being put on notice by the Commissioner IGT has requested 3 further extensions of time–the sixth extension, the seventh extension and the present request. Looking at the reasons set out above for the sixth extension of time there is detail of further progression of evidence with the first expert (Mr Dimond) and also an explanation of why the second expert had not been able to supply evidence but there was an indication from this expert that he would “provide his response shortly”. There was also comment that amendments were being prepared. Prima facie, there appeared to have been progress with the preparation of evidence from the first expert, and an expectation of evidence from the second expert.
For the seventh extension, IGT indicated that they had obtained the services of a third expert due to the recalcitrance of the second expert. There was an indication that the third expert was working diligently to review the literature and a response from the third expert, as well as the first expert, was expected very soon. There is nothing here to indicate a lack of diligence. In particular, the decision by IGT to engage another expert to cover for problems with the second expert is something that would be expected.
Turning to the present extension, the explanation set out that IGT, having been informed of the unavailability of their first expert, had engaged a fourth expert to alleviate the disruption. There is also detail of further progress by the third expert. IGT appears to have been active in their evidence preparation.
Hence, it would appear that, since being put on notice, IGT has not been lacking diligence in its preparation of evidence. I am aware that it took a letter from the Commissioner to achieve this movement and it could easily be said that IGT got a “free ride” for their first five extensions. However, if, having been put on notice, IGT’s conduct had shown no change, it could have been said that they were not employing a diligent approach to the collection of evidence. This does not seem to be the case. In addition, it could also be said that Aristocrat agreed with this state of affairs given that they did not officially object to the sixth and seventh requests for extensions.
On balance, taking into account IGT’s actions since receiving the letter from the Commissioner, I believe that the explanation justifies an extension of time.
INTERESTS OF THE PARTIES
IGT submitted that they 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. They submitted that Aristocrat would not be disadvantaged. I was referred to Purkess v Crittenden 114 CLR 164 where it was stated:
“The expression “burden” or “onus” of proof, “As applied to judicial proceedings . . . has two distinct and frequently confused meanings: (1) the burden of proof as a matter of law and pleading - the burden, as it has been called, of establishing a case, whether by preponderance of evidence, or beyond a reasonable doubt; and (2) the burden of proof in the sense of introducing evidence” (Phipson on Evidence, 10th ed. (1963) par. 92). This is a proposition which has been frequently acknowledged. The position is, we think, correctly stated by the learned author of the work to which we have referred when he says: “the burden of proof in the first sense is always stable, the burden of proof in the second sense may shift constantly, according as one scale of evidence or the other preponderates” (ibid. par. 95) (citations omitted)
With regard to the shifting burden of evidence, IGT submitted that once they had provided evidence to show why they should be granted the indulgence of an extension of time, the burden of proof then swung to Aristocrat to provide evidence to show why the extension should not be granted. IGT submitted that Aristocrat had supplied no evidence showing why the extension should not be granted. Moreover Aristocrat had provided no evidence that granting the extension of time would have a prejudicial effect on it. My attention was directed to the letter that Aristocrat had filed objecting to the extension of time and, in particular, the complete lack of reasons as to why the objection should not be granted.
This submission appeared to be suggesting that I should dismiss the objection by Aristocrat purely because they had not given any reason why they opposed the extension of time when they filed their notice of objection. IGT submitted that Aristocrat’s objection should be taken to be baseless “unless and until it is articulated in a manner which shows that it is properly based”. This is a pertinent point, but not for the reasons that IGT supposes. In this regard I have taken note of Les Laboratoires Servier v Lupin Limited [2007] APO 4 where it was said:
“it is the Commissioner's practice to give due considerations to the explanation for the delay wherever and whenever the explanation is disclosed. That is, no lesser consideration is given to explanations just because they were disclosed "late" or not with the written explanation. Therefore, it [is] entirely proper to consider the submissions made at the hearing regarding the reasons for the delay in filing the relevant evidence.”
The same principle applies to the objection by Aristocrat. While I believe that it would be excellent practice for a party filing an objection to state what grounds they have for opposing the extension (in the same way that a party files an explanation of the delay when requesting an extension), it is not mandatory. I will not simply ignore the submissions made by Aristocrat on this point. They form part of the considerations.
Aristocrat’s submission on the interest of the parties was that they would be disadvantaged because of the uncertainty caused by further protraction of the proceedings. They submitted that there were commercial opportunities that they could not pursue because of this unresolved opposition. Aristocrat submitted that IGT would not be shut out of the opposition if the request was refused. Aristocrat pointed out that IGT had the opportunity to file a divisional application as they had done with a previous opposition.
None of this seems to point to a specific prejudice that Aristocrat would suffer if this extension was granted. This is not to say that there is a zero risk of prejudice to Aristocrat. Obviously, as IGT acknowledged during the hearing, seeking a delay to the opposition will impact the parties. However, the reasons advanced by Aristocrat on the parties interests are not convincing. Although Aristocrat indicated that they cannot pursue commercial opportunities while this opposition is alive, this is unconvincing given that they are, in fact, opposing the patent and (according to their Statement of Grounds and Particulars) seek “refusal to grant a patent on Application 760617”. In other words, Aristocrat is effectively saying that the patent would not be valid if granted. In that circumstance, it is difficult to see why they would be holding back on pursuing opportunities that would supposedly lead them to infringe an invalid patent. There seems to be no specific threat there. On the point that IGT could file a divisional, this is also not convincing for the same reason. Given that a divisional can only be made for an invention disclosed in an earlier application, and Aristocrat seems to be indicating that no invention in the present application is patentable, it is difficult to see how this would reduce the disadvantage to IGT of not granting the extension.
The detrimental effect on IGT of not granting the extension would appear to be greater than that suffered by Aristocrat. On balance the interest of the parties supports granting the extension.
PUBLIC INTEREST
The public interest in determining a serious opposition on its merits is a relevant consideration. In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings [A Goninan & Co Ltd v Commissioner of Patents (supra)]. The other arm of the public interest is the expeditious disposal of matters before the Patent Office. Considerations under this heading involve a balancing act. To put it bluntly, the question that could be asked in making a decision is “Is the delay worth it?” Will the evidence be of such relevance that the delay is excusable because the outcome of the substantive opposition will be that much better for its presence?
From IGT’s explanation (above) it is clear that the evidence they are seeking to file from the third and fourth experts is directed towards the common general knowledge related to areas that are directly relevant to the opposition. Paragraphs 10–12 of the explanation set out the points that IGT is seeking evidence on. Specifically, these points are being considered in light of the concept of a decrementing jackpot, which had not been covered before. Looking at it purely in the light of the explanation, in my opinion this evidence would appear to be very important to the considerations of this opposition. Its inclusion would lead to a better and/or more just opposition outcome. It would allow a serious opposition to be treated on its merits.
However, Aristocrat made the submission that the points that were to be addressed by the third and fourth experts (set out in paragraph 11 of the explanation) had already been covered in the evidence in answer served by IGT (Mr Dimond’s declaration). Aristocrat submitted that IGT’s position that Mr Dimond’s declaration only went to general points of common general knowledge and not specific points was not correct. Regarding the points set out in the explanation at paragraph 11 of the explanation, Aristocrat submitted that those points were raised in the questionnaire sent to Mr Dimond and were addressed by him in his declaration. This was also supported by the explanation given for the fifth extension of time which listed aspects of the art that the (then draft) declaration of Mr Dimond was addressing. This list was the same as the one given in the present explanation. Aristocrat also submitted that IGT already had evidence on file regarding decreasing bonuses in Australia. Aristocrat pointed to paragraph 17(d) on page 14 of Mr Dimond’s declaration where it was said:
“I am not aware of and have no recollection of any bonus as at 26 June 1998 that operated such that the bonus value decreased, as opposed to being accumulated.”
In response to this submission, IGT submitted that each expert was entitled to look at all aspects and if one expert, such as Mr Dimond, had been involved and further evidence was led by an alternative expert or a substitute expert, then that “extra” expert was fully entitled to express such views on such matters, even if Mr Dimond had expressed a view. IGT stated that to do anything less than that would be to unfairly trammel the scope of the enquiry of an expert witness and IGT may well be criticised at a hearing if they restricted it in that way. IGT put Aristocrat’s submissions as standing for the proposition that if an expert had dealt with certain evidence before and another expert duplicated that evidence then that further evidence should be disregarded.
I do not think that IGT’s submissions are to the point. To my mind, if an expert for a party has made statements regarding certain aspects of common general knowledge, and the party seeks an extension of time to file evidence from another expert simply going to the same aspects of common general knowledge, then I do not see how the public interest is served in delaying proceedings for the same evidence. As was said in Australian Lock Company Pty Ltd v Lockwood Security Products Pty Ltd [2005] APO 12:
“While it could be said with some confidence that expert evidence is accepted by IP Australia, it does not automatically follow that expert evidence must always be submitted. There is no rule or law which requires that IP Australia be supplied with evidence just for the sake of it.” (my emphasis)
I know of no decision where a statement of common general knowledge has suddenly become more correct just because two experts have made it rather than one.
While there is also the other evidence that IGT mentions in their explanation regarding the review of the prior art documents that at least the third expert is currently undertaking, in my opinion this is not important to the considerations of public interest for this particular case. I am unsure of the value that review of prior art documents by experts has in opposition proceedings. To my mind, pointing out differences (if any) between claims and prior art documents is not something that can only be done by an expert. It is something that could be dealt with just as easily by submission at the substantive hearing by the representatives of the parties. There is nothing in the explanation or the submissions made by IGT that suggests that there is some overwhelming reason that requires the use of an expert.
However, in spite of all the above, I do not think Aristocrat has conclusively shown that the evidence still to be served will be exactly the same as that already filed and, therefore, unnecessary. It may well be that the fourth expert of IGT will, in carrying out their enquiry, uncover further evidence of common general knowledge that is missing from Mr Dimond’s declaration. However, I have doubts on this front. Nevertheless, I am prepared at this point in time to give the benefit of the doubt to IGT and conclude, with great hesitation, that it is in the public interest to grant the extension to allow the filing of this evidence.
AMENDMENTS
I note that concerns were expressed by Aristocrat that the amendments that IGT has foreshadowed in prior requests for extensions of time would raise the possibility that these proceedings would be delayed while they were dealt with. However, while not part of the considerations that form part of my decision, I will note in passing that, given such decisions as those in Exxon Chemical Patents Inc v Lubrizol Corporation (1998) 41 IPR 126, Affymax Technologies N.V. v Diversa Corporation [2001] APO 52, and Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr. Company [2007] APO 8, a relevant consideration when deciding whether to delay opposition proceedings while amendments are being dealt with is whether there were any undue delays in proposing (or processing) those amendments.
CONCLUSION
Taking all relevant considerations into account, I allow the requested extension of time until 6 September 2007.
However, I am mindful that some 23 months has elapsed since evidence in answer was due. In line with previous decisions, the Commissioner would expect to see indication of greater effort being 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.
I also put IGT 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. As noted, there is no public interest in delaying an opposition to receive evidence that has already been given.
COSTS

The normal practice is that costs should follow the event. In the present matter I have decided to grant the extension. Nevertheless, it was not without some hesitation on the matter of the public interest, and also taking note of the fact that it was only when the Commissioner made plain her displeasure at IGT’s progress that IGT began progressing their evidence in a diligent manner. However, Aristocrat has lost their challenge. In the circumstances, I believe it is not appropriate to make an award of costs. Consequently, each party is to bear its own costs in this matter.
GREG POWELL
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Wary & Associates, Perth
Patent attorneys for the opponent : Freehills Patent & Trade Mark Attorneys, Sydney