IGT v Aristocrat Technologies, Inc - [2009] APO 11

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 2002334685 in the name of Aristocrat Technologies, Inc.

Title: Apparatus and Method for Retrofitting Gaming Machines to Issue and Redeem Tickets
Action:Opposition by Aristocrat Technologies Inc. to an extension of time under section 223

Decision: Issued: 12 June 2009
Abstract

This decision is related to the decision of the Commissioner’s Delegate in Aristocrat Technologies, Inc. v IGT [2008] APO 33 in which it was found that service of the Statement of Grounds and Particulars was not timely effected under the provisions of the Electronic Transactions Act 1999.

Section 223 extension of time granted.

At least two errors were found causative of the late service including failure to appropriately recognise an imminent deadline and mistaken belief relating to service using electronic communication.

Costs awarded against Aristocrat.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2002334685 by Aristocrat Technologies and an opposition by IGT to an extension of time under section 223

BACKGROUND

Patent application 2002334685 was filed on 25 September 2002 in the name of Aristocrat Technologies Inc. (hereafter Aristocrat) under the provisions of the PCT. It claimed priority from US basic application (09/968622) filed on 1 October 2001 and entered the National Phase in Australia on 1 April 2004.

The Australian application was advertised accepted on 17 January 2008 and a Notice of Opposition was filed by IGT on 17 April 2008. Under regulation 5.4, the opponent then had 3 months to serve a copy of their Statement of Grounds and Particulars (SGP) on the applicant. This set the deadline for serving the SGP at 17 July 2008.

IGT made a number of attempts to serve their SGP electronically at the applicant's address for service (their patent attorneys Griffith Hack, Melbourne):

·    an email which was received by the Aristocrat attorney's server at 23:59:59 on 17 July 2008, one second before midnight;
·    a facsimile which was received by the Aristocrat attorney's Melbourne Office at approximately 12:30 am on 18 July 2008; and
·    a facsimile which was received by the Aristocrat attorney's Perth Office at 10:32 pm (Perth time) on 17 July 2008

Only the email was actually received by the applicant's address for service in Melbourne on 17 July 2008 and this occurred at one second to midnight. The applicant argued that this was outside of normal business hours when no one was around to receive the email and that the SGP had not been properly served on 17 July 2008.

A delegate of the Commissioner advised the parties that the Commissioner prima facie accepted the date of receipt of the email as the date of service and was therefore satisfied that service was completed in time.

The applicant disagreed with the delegate's view and requested the Commissioner dismiss the section 59 opposition under regulation 5.5 for failure to serve an SGP within the statutory deadline. This matter was heard in Canberra…

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.

Continue reading IGT v Aristocrat Technologies, Inc

Details

AGLC: IGT v Aristocrat Technologies, Inc [2009] APO 11
Case: [2009] APO 11
Decision Date: 12 June 2009

CaseChat Overview and Summary

Aristocrat Technologies, Inc. opposed an application by IGT for an extension of time under section 223 to file a Statement of Grounds and Particulars in relation to an opposition to a patent application. The application for an extension of time was made by IGT on 5 January 2009, with supporting evidence in the form of a Statutory Declaration made by Mr Stephen George Krouzecky. The dispute centred on whether IGT had made a timely service of its Statement of Grounds and Particulars, and if not, whether an extension of time should be granted under section 223 of the Patents Act 1990.

The legal issues in this case were whether IGT had committed an error or omission that caused the failure to serve the SGP in time, and if so, whether the circumstances justified an extension of time under section 223. The court considered the principles that guide the granting of extensions of time under section 223, including the need for a full and frank disclosure of all relevant circumstances, the interests of the parties in refusing or granting the extension, and the public interest.

The court found that IGT had committed at least two errors that caused the delay in serving the SGP, including a failure to appropriately recognise an imminent deadline and a mistaken belief relating to service using electronic communication. The court concluded that these errors were causal in IGT's failure to serve the SGP in time, and that the interests of the parties and the public interest favoured granting the extension. The court granted the extension of time under section 223(2)(a) and awarded costs against the applicant, Aristocrat.

In summary, the court found that IGT had committed errors that caused the delay in serving the SGP, and that the circumstances justified an extension of time under section 223. The court granted the extension and awarded costs against the applicant.

Orders