IGT v Aristocrat Technologies Australia Pty Ltd - [2007] APO 23

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 751088 in the name of Aristocrat Technologies Australia Pty Ltd

Title: Mystery Jackpot controller

Action: Opposition under Section 59 by IGT, an objection to an application under Regulation 5.10(2) for an extension of time in which to serve evidence in reply

Decision: Issued 29 June 2007.
Abstract

The opponent has not shown a lack of due diligence in the preparation of their evidence as the problems with the expert’s availability and late withdrawal were largely out of their control. However, the opponent’s on-going problems cannot be used to justify indefinite extensions. The current delays have to be considered in light of the total time the opponent has taken to prepare their evidence and what further delays are now being anticipated. This opposition has been on-going since November 2002 and it is in the public interest to resolve questions regarding the validity (or otherwise) of the patent as soon as possible.
The opponent has advised that they should be able to complete their evidence within the current extension period. If the evidence is important as the opponent has alleged, the short extension is in the public interest. However any further extensions are not appropriate.
To that end, a conditional-type extension similar to that proposed by the delegate in Amcor Packaging (Australia) Pty Ltdv Barokes Pty Ltd [2004] APO 20 (14 July 2004) and Aristocrat v Acres Gaming [2005] APO 27 (20 May 2005) was allowed.

PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 751088 in the name of Aristocrat Technologies Australia Pty Ltd, opposition under section 59 by IGT, an objection to an application under regulation 5.10(2) for an extension of time in which to serve evidence in reply

BACKGROUND

Patent application 751088 was filed on 9 October 1999 by Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) claiming divisional priority from a parent application (24992/99) filed on 19 October 1995. The divisional application was advertised accepted on 8 August 2002 and on 1 November 2002 a notice of opposition was filed by the then opponent, Acres Gaming Inc. Acres Gaming Inc was formally acquired by IGT in October 2003 and the opposition is now proceeding in the name of IGT. The opponent served their Statement of Grounds and Particulars on 31 January 2003 followed by their evidence in support on 30 November 2004.

The applicant then finalised their evidence in answer on 27 January 2006 meaning that evidence in reply was initially due on 27 April 2006. Since that time, the opponent has applied for (and been granted) four extensions of time to serve their evidence (all of which were unopposed). The current (and fifth) extension request was filed on 27 April 2007. The opponent is seeking an extension until 27 July 2007 to complete their evidence. The applicant objected to this extension and the matter was set for hearing in Canberra on 5…

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.

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Details

Case: [2007] APO 23
Decision Date: 29 June 2007

CaseChat Overview and Summary

Aristocrat Technologies Australia Pty Ltd opposed the grant of a patent to IGT, and IGT sought an extension of time to serve evidence in reply to the opposition. The Delegate of the Commissioner of Patents granted IGT a conditional extension of time, subject to the completion of their evidence in reply by 27 July 2007. The Delegate held that the delays in the proceedings were largely due to the unavailability of IGT's expert witness, which was outside of their control. However, the Delegate considered that IGT had had ample time to prepare their evidence and that further delays would not be in the public interest. The Delegate considered the public interest in determining a serious opposition on its merits, and the need for finality in opposition proceedings. The Delegate held that a short extension was appropriate in the circumstances, but that further extensions would not be granted.

The Delegate of the Commissioner of Patents granted IGT a conditional extension of time to serve evidence in reply to the opposition, subject to the completion of their evidence by 27 July 2007. The Delegate found that the delays in the proceedings were largely due to the unavailability of IGT's expert witness, which was outside of their control. However, the Delegate considered that IGT had had ample time to prepare their evidence and that further delays would not be in the public interest. The Delegate balanced the public interest in determining a serious opposition on its merits, and the need for finality in opposition proceedings. The Delegate held that a short extension was appropriate in the circumstances, but that further extensions would not be granted. The Delegate awarded costs against IGT, as the extension was granted on conditions and based on further reasons provided by IGT at the hearing.

Orders