Indoor Cricket Arenas (Australia) Pty. Ltd. v Australian Indoor Cricket Federation

[1987] APO 20

In the Matter of the Patents Act 1952

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In the Matter of Application No. 546741 for a Patent by INDOOR CRICKET ARENAS (AUSTRALIA) PTY. LTD.

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In the Matter of Opposition thereto under Section 59 by the AUSTRALIAN INDOOR CRICKET FEDERATION.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
        The application accompanied by a provisional specification was lodged on 13 June, 1980.  The complete specification was lodged on 4 June, 1981, and advertisement of acceptance appeared in the Official Journal of 19 September, 1985.
        The Australian Indoor Cricket Federation (AICF) lodged notice of opposition on 19 December, 1985 and completed service of their evidence in support by 23 June, 1986.  On 17 October, 1986 the applicant (ICA) indicated that under the provisions of regulation 57A, they did not intend to serve evidence in answer.  The matter came to hearing on 2 February, 1987 in Canberra.  The notice of opposition specified all grounds available under section 59; however at the hearing argument was restricted to those grounds concerned with prior publication, novelty, manner of manufacture and section 40.  In addition the question of locus standi of AICF was raised and argued.

A decision issued 26 March, 1987, the findings of which may be summarised as follows:

(i)Locus Standi

On the basis of the evidence on file AICF had not established locus standi.

(ii)Prior Publication; Novelty

All claims except claim 13, which defines apparatus for playing a game of indoor cricket including the feature that each set of stumps is spring mounted on a base, were anticipated.

Section 40

Claim 1 omits matters which are essential to the invention: various appended claims are redundant.

(iv)Costs

Even though AICF had not established locus standi and hence its right to oppose, it had performed a public service by bringing serious matters before the Commissioner, and consequently each party would bear its own costs.

(v)Amendment

As the specification did, on the basis of the evidence provided, disclose patentable subject matter, ICA was allowed 60 days from the date of the decision to propose amendments accordingly.

Subsequently to issuance of the decision, the Attorneys for AICF wrote to the Office drawing attention to two published Australian patent specifications having disclosures relevant to the spring mounted stumps of the application in suit.  As a result of this, and of AICF's desire to submit evidence of locus standi, the parties, in the interests of natural justice, were offered a chance to be further heard.  Both agreed, and the matter was set down for 21 July, 1987 in Canberra.  At that time Mr. F. Old, patent attorney of Spruson & Ferguson, Sydney, attended on behalf of AICF and Mr. K. Lord, patent attorney of Kelvin Lord and Company, Perth, took part in the proceedings on behalf of ICA via a conference telephone hook‑up.
The Action
        This action is based on two matters.  The first concerns the issue of locus standi of AICF, which had not been established at the time of issuance of the first decision.  The second concerns the citing subsequent to issuance of that decision, of two relevant published Australian patent specifications.  Pursuant to the latter, Mr. Lord on behalf of ICA has sought to re‑open a matter not directly related thereto, but which he suggests was not fully argued at the first hearing.
        Where there has been a hearing in accordance with sub‑section 60(1), and the Commissioner (or his delegate) has decided the case by allowing the applicant to propose amendments to correct defects found in the specification, it is the practice of this Office, after amendment of the specification, to invite the opponent to be heard again before the fate of the application is finally determined.  If the opponent does wish to be heard, the applicant is, of course, invited to attend the hearing.  The point is, that while the amendments proposed under section 77 are opposable under section 82, the only ground of opposition is that the amendment is not allowable under section 78 : on the other hand the specification as amended may be in a form such that it could not properly be said to have been the subject of argument by the applicant and opponent on the basis of one or more of the grounds of opposition under sub‑section 59(1).  Consequently the provisions of section 162 and regulation 85 become applicable with respect to the amended specification.
        Formerly, an initial decision in accordance with sub‑
section 60(1) was styled as "interim", while the decision following amendment of a specification consequent upon the "interim" decision was styled as "final", whether or not preceded by another hearing.  However it was held, inter alia, by Fullagar J. sitting on the Bench of the Supreme Court of Victoria, in the exercise of Federal jurisdiction that:

(i)the title "interim decision" was irrelevant to the characterization of the Commissioner's acts;

(ii)on a full examination of the Commissioner's "interim decision" in the case in question he had by it actually decided as much of the opposition proceeding as was susceptible of decision at the time, and had decided it once and for all, although at the same time deciding what things might be done in the future conduct of the opposition proceedings, and therefore he had carried out his duty to "decide the case" as it presently subsisted before him.

(See Broken Hill Pty. Co. Ltd. and Comalco v. American Can Co. 29 ALR 424).
The High Court took this matter somewhat further in their judgement in Ex parte Mole Engineering Pty. Ltd. (1981) 35 ALR 119. In that case a Hearing Officer had made an interim decision on a section 59 opposition, suggesting that certain amendments would probably be favourably considered. Shortly thereafter the Hearing Officer became unavailable for duty, and when amendments were proposed and opposed, the resulting hearing was conducted by a different Hearing Officer. Before the decision was issued, the applicant sought a re‑hearing of the section 59 matter, ab initio. The stated ground was that the officer hearing the amendments issue was not the original officer, but it was clear from the correspondence that the applicant considered that the section 59 issue had been wrongly decided ‑ see the judgement of Wilson J. at page 127. The second Hearing Officer found that the amendments proposed were allowable, but the Commissioner directed that although that decision should issue, the amendments should not be allowed for 28 days, to give the applicant time to withdraw the amendments, whereupon the Commissioner would direct a re‑hearing ab initio. The opponents sought a writ of prohibition which the High Court made absolute. In judgements delivered by Mason J. and Wilson J. (Murphy J. and Aickin J. concurring) the status of an interim decision was discussed, as was the power of the Commissioner in such matters as well as the course open to an applicant or opponent who considered an interim decision to be wrong. The Mole Engineering case thus provides authority for the propositions:

(a)that the Commissioner has no power to direct a re‑hearing in such circumstances, and

(b)that an interim decision is a final decision in that it determines all issues of the opposition insofar as they are capable of final determination, and such decision cannot be re‑heard or challenged except on appeal.  Thus all decisions are "final" insofar as they determine all issues capable of determination at the particular stage of the proceedings to which they relate.

The "re‑hearing" situation set out above did not involve new evidence and is to be distinguished from the situation wherein the Hearing Officer may become aware of relevant* evidence or facts relating to an inter partes action after the matter has been heard. In this situation, section 162 and regulation 85 become applicable and the parties should be offered a further hearing at which they can argue the material of which the Hearing Officer has become aware. (See BOC International Ltd.'s Application (1980) RPC 122).
        In my view, the first and second matters to which I have referred above fall into the class of situation envisaged by the Court in the BOC case (supra), whereas the matter which Mr. Lord seeks to re‑open falls into the category dealt with by the High Court in the Mole Engineering case, as it concerns purely the interpretation and application of the law as set out in my earlier decision.  Consequently, I refuse to deal with Mr. Lord's submissions on this particular matter.

*by "relevant" I mean that the evidence could seriously affect the rights of a party to the action, or the public interest. On the one hand, the question of natural justice arises, and on the other, the High Court has made it clear that the Commissioner has a duty not to seal a patent which would be clearly invalid. See Tate v. Haskins 53 CLR 495.

Locus Standi
        AICF has lodged a statutory declaration by Keith Stanley Hurst who is the secretary of the Federation.  (Mr. Hurst appeared at the first hearing in this matter as advisor to Mr. Old).  Mr. Hurst declares, inter alia, that at the date of filing notice of opposition the members of the Federation were:

.N.S.W. Indoor Cricket Federation

.Victorian Indoor Cricket Association

.Queensland Indoor Cricket Federation

.South Australia Indoor Cricket Federation

.Western Australia Indoor Cricket Federation

.Tasmanian Indoor Cricket Federation

.Northern Territory Indoor Cricket Federation.

His declaration has a number of exhibits including copies of the "Rules of the Federation" and the Federation's "Statement of Purposes".  In addition, copies of all General Minutes of Meeting of
the Federation prior to 19 December, 1985 (the date of the section 59 notice) are annexed.  Finally, as stated in my earlier decision, a check made from this Office revealed that AICF has been registered as a body incorporated under the Associations Incorporation Act of Victoria 1981 since 3 April, 1984.
        My earlier decision dealt with this matter in the following terms:

"I note also that Mr. Old's submissions as to the standing of the opponent are unsubstantiated by any evidence on file.  In fact the only information appearing on file about the nature or constitution of the Federation is the statement on the Notice of Opposition:

"We are an association of proprietors and/or operators of indoor cricket centres."

Overall, I find I have virtually no information on the real constitution and aims of the Federation.

I turn now to consider the applicability of the judgement in the Australian Radio Manufacturers' Patents Association case to the present circumstances.  The relevant aspect of that case concerned the fact that the Association was a company formed for the purpose of protecting the interests of patentees in relation to their patents.  The High Court determined that such a company had no locus.  In coming to this conclusion Latham C.J. commented:

"In my opinion, to hold that patentees may appoint agents who would be entitled to oppose such an application as this upon the ground really that the persons they represented or their shareholders had an interest would be going far beyond any decided case, and would be introducing a dangerous principle into the administration by the Commissioner and in the courts of the Patents Act."

Dixon J. (as he then was) commented:

"It is quite clear that a distinct entity such as a company cannot rely upon the interests of its shareholders as property, tangible or intangible, which it represents."

It seems to me that these comments are directly relevant to the present situation, and as ‑ in my opinion ‑ none of the information I have at hand leads away from this view, I find that the Australian Cricket Federation has not established locus standi."

Upon consideration of the evidence now placed before me by AICF, I find that the Australian Radio Manufacturers' case (supra) is not applicable.  On the basis of its new evidence, it is manifestly clear that AICF is a distinct legal entity ‑ and this much was agreed by counsel for ICA at the earlier hearing ‑ which has a very definite direct pecuniary interest in activities relating to indoor cricket, and not an indirect interest relating to its constituent members, i.e. it bears a similar relationship to its members as a holding company does to its subsidiaries.  Consequently I find that AICF is ‑ and was at the time of the notice ‑ a person interested in the terms of section 59.
Anticipation
        The Australian patent specifications raised by AICF are Nos. 525110 and 235492.  Respecting these, Mr. Lord made the following submission:

"At the outset we wish to comment that Patents Nos. 525110 and 235492 should be considered as documents which stand together rather than as two independent documents.  This is because Patent No. 525110 makes extensive cross‑reference to Patent No. 235492 and the invention of 525110 is clearly an improvement on that of 235492.  Thus, these cognate documents do not establish that spring mounted stumps were well known or part of the common general knowledge at the priority date of the claims of 546741.  Further, there is no evidence at all that either of the disclosures of 235492 and 525110 is anything more than a paper publication.  Further, we would also point out that neither of 235492 or 525110 makes any mention of indoor cricket let alone the particular form of indoor cricket claimed in 546741."

Mr. Old took a somewhat opposite view to Mr. Lord on the practice of the Office in dealing with games apparatus and he stated that his perception of the situation was that the two citations raised by his client destroyed all novelty in the subject application.  The claim under review is claim 13 as accepted.  To determine the scope of claim 13, it is necessary to consider the scope of claim 1.  Claim 1 reads as follows:

"An apparatus for playing an indoor cricket game comprising a playing arena having a playing area surrounded by wall means, a roof overlying the wall means, a cricket wicket on the playing area, said wicket having a bowlers end and a batsmens end, a set of stumps at each end of the wicket, a popping crease and a return crease marked at the bowlers end of the wicket and a batting crease marked at the batsmans end of the wicket, wherein the playing area has bonus run scoring zones having boundaries marked on and extending laterally of the playing area which bonus run scoring zones are located forward of the batting crease, whereby bonus runs are allocated to the batsman according to the scoring zone corresponding to the region of the wall means first struck by a ball struck by the bat of the batsman."

This claim is directed to apparatus for playing an indoor cricket game.  The apparatus is characterised by the following features:

(i)a playing arena having a playing area surrounded by wall means

(ii)a roof overlying the wall means

(iii)a cricket wicket on the playing area

(iv)a set of stumps at each end of the wicket.

The claim also makes references to the marking of creases and of bonus run scoring zones.  As I found in my earlier decision, these markings do not form part of the apparatus for playing cricket, but merely constitute information.
        Claim 13 reads as follows:

"An apparatus according to any preceding claim, in which the sets of stumps are each spring mounted on a base."

The scope of claim 13, then, is, in its broadest form, constituted by five features, viz., the four set out in respect of claim 1 plus a fifth feature that each set of stumps is spring mounted on a base.
In the first decision on this application I stated (page 11) that I agreed with Counsel for the applicant that the apparatus claimed could be considered as a combination. This is, of course, because there is, between the individual features comprising the playing apparatus, a potential working interrelationship. (See Cobianchi's Application 70 RPC 199). Therefore, in considering anticipation, I have to consider whether any particular alleged anticipating item discloses in substance all five aforesaid features. As far as prior publication is concerned, I cannot mosaic the disclosures of the spring loaded stumps with any of the evidentiary disclosures on file relating to the game of indoor cricket as the latter also comprise public knowledge, pursuant to use. Clearly then, as the former disclose nothing but spring loaded stump and post constructions, per se, they do not prior publish claim 13.
        I come now to the question of novelty.  In this, the evidence which is before me can be briefly summarised as follows:
Public Knowledge

(a)AU 235492 and AU 525110 ‑ these specifications disclose constructions of cricket stumps, spring mounted individually on a base in sets of three, as required by claim 13.  Both specifications became available to the public before the priority date of the present application,

(b)Evidence on file lodged in support of the opposition showing that indoor cricket had been played publicly before the priority date with "apparatus" which comprised:

bats, ball, wicket, sets of stumps, set in an indoor playing area, the playing area being also surrounded by walls and roof of open weave netting.  (In addition, there was marking of scoring zones ‑ however as I have previously indicated, such marking does not constitute part of the apparatus in the sense of contributing to its patentability).

Common Knowledge

(c)The standard game of cricket is clearly common knowledge ‑ and this includes the apparatus, and the nature of various playing surroundings.

[While it was suggested by Mr. Old that spring loaded stumps would be well known, no such evidence has been produced].

(d)It is clearly common knowledge that various outdoor games can simply be transferred to indoors or covered locations to protect against climatic conditions.

[What is not common knowledge is the matter of any variations of the apparatus or surroundings involved in (c) above which might be necessary in transferring that game indoors].

As I have set out above, claim 13 in its broadest aspect consists of five features, the first four of which amount to absolutely nothing more than the standard apparatus for a game of cricket, but located in an enclosed area, or indoors.  This much then, cannot be distinguished in any sense of patentability from items (c) and (d) above.  In addition, claim 13 is limited to including a fifth feature, and this feature is public knowledge.  It is clear that (for example) if any adaption or constructional variation of the apparatus for playing cricket were claimed which made that apparatus specific to indoor cricket, or provided for the effective transfer of the outdoor game to an indoor game, novelty could arise as a result.  However this is not so in the present instance.  The situation here is that any person* is entitled to use sets of spring loaded stumps mounted on a base in playing a standard game of cricket.  In my view, such person would be entitled also to move that game to an indoors location.  Consequently no person is entitled to protection which would prevent this.  In the result, claim 13 lacks novelty.
        Item (b) (above) of the public knowledge is of no assistance in dealing with claim 13 as it does not of itself disclose spring mounted stumps, nor can it be mosaiced with either of the patent specifications which do.

*patent 235492 has expired; patent 525110 is still in force, but the patentee or persons legally using the subject matter would of course be in equivalent positions to that person.

Costs
        As I have found that AICF had locus standi at the time of lodging notice of opposition, and as they were successful in the first instance, I award costs up to the time of issuance of the first decision in this matter in their favour.

        However, the necessity of the second hearing was a consequence of their actions, and I therefore award costs in favour
of ICA in respect of events since issuance of that decision.
Conclusion
        The findings expressed in the earlier decision and herewith indicate that in my view none of the claims of the present application define patentable subject matter.  However, it seems to me that it would be possible, having regard to the evidence on file, to define matter which would be patentable, albeit somewhat restricted.  Consequently I allow ICA 60 days from the date of this decision to pursue such course, should it so desire.

(J.L. ROVETA)

Patent attorneys for the applicant : Kelvin Lord and Company