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

[1987] APO 6

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 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 indicated that under the provisions of regulation 57A, they did not intend to serve evidence in answer.  On this basis the matter came to hearing on 2 February, 1987 in Canberra.
         Mr. J. Garnsey of Counsel, instructed by Mr. K. Lord, Patent Attorney of Kelvin Lord and Company appeared for the applicant; Mr. Fraser Old of Spruson & Ferguson, instructed by Mr. Hurst, Solicitor of Keith Hurst & Associates, appeared for the opponent.

Grounds of Opposition
         The notice of opposition specifies 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.
Locus Standi
The "opponent" is the Australian Indoor Cricket Federation. At the outset of the hearing, Mr. Garnsey indicated his acceptance of the Federation as a "person", but not as a "person interested", in the terms of sub‑section 59(1). In support of his contention that the Federation was not a "person interested", and consequently not entitled to oppose the application, he referred me to the judgement of the High Court of Australia in Australian Radio Manufacturers' Patents Association Limited v. Neutrodyne Proprietary Limited 57 CLR 27 and to paragraph 91 of Australian Patent Law by C.J. Bannon Q.C. (Butterworths, 1984), which deals with this subject.
         Mr. Old submitted that the Radio Manufacturers' Patents Association case dealt with quite different circumstances from the present action.  Thus (he said) there was a manufactured article in the field of radio involved, and the real basis of the objection to locus standi was that the Association was not a manufacturer, distributor or seller of radio goods: in the present situation the invention concerns the game of indoor cricket or apparatus used in playing the game.  The Australian Indoor Cricket Federation (said Mr. Old) is an organising body which holds a position in relation to the sport of indoor cricket quite unlike that held by the Australian Radio Manufacturers' Patents Association; whilst the latter merely held patents on behalf of the members of the Association, the former is an organisation which holds competitions for its members, thereby conducting the sport of indoor cricket; in so doing it conducts the game with apparatus which is sought to be protected by the applicant.  In addition, Mr. Old explained that the Federation organises the promotion of the sport and acts as a unifying body for those of its members in that advertising and promotional material is all arranged on a group basis.  Finally, Mr. Old stated that the Federation owns various trade marks including a logo with the letters AICF, and records its members as registered users thereof.
         Whereas (pursuant to a private conversation prior to the hearing) Mr. Garnsey accepted that the Federation was a legal person, he invited me to disregard the whole of Mr. Old's submissions on locus as there was no supporting evidence whatever on file.
I do not entirely agree with Mr. Garnsey on this point. Firstly, I am conscious of the judgement of the High Court of Australia in Kaiser Aluminum & Chemical Corporation v. Reynolds Metal Co. ((1969) 120 CLR 136 at 143) in which Kitto J. said that "... it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than it should be shut out in consequence of a failure in procedure". Secondly, concerning tribunals, it was said by Lord Denning M.R. in T.A. Miller Ltd. v. The Minister for Housing and Local Government and Another (1968) 1 WLR 992 that a tribunal (of this kind) is master of its own procedure provided that the rules of natural justice are applied, and that tribunals are entitled to act on any material which is logically probative, even though it would not be evidence in a court of law.
         Similarly, Deane J., sitting in the Federal Court of Australia, issued a judgement including the following paragraph:

"These technical rules of evidence, however, form no part of the rules of natural justice.  The requirement that a person exercising quasi‑judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non‑existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant."

(See Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666 ‑ Smithers, Evatt and Deane J.J.)

Finally, the High Court, has said that "... matters of common knowledge and experience are open to us ..." (See Australian Communist Party v. The Commonwealth 83 CLR 1 at 196).
         Bearing the aforesaid authorities in mind, I am aware of the following matters:

1.The Federation has been registered (No. 969) as a body incorporated under the Associations Incorporation Act of Victoria 1981, since April 1984.

2.The Federation has given a Sydney address (which is in fact the address of the Indoor Cricket Federation Inc. of N.S.W) but it is not listed in the Sydney telephone directories of 1985 and 1986 (the most recent available at the time of writing).

3.There are no applications for registration of Trade Marks before the Office, nor have any marks been registered in the name of the Federation.  There are no marks on the Register including the first letters of the full name of the Federation (i.e. AICF).  (I emphasise that Mr. Old in his submissions did not claim that the marks to which he referred were registered).

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 Indoor Cricket Federation has not established locus standi.
         The question now arises as to what consequence this conclusion can have, as the Federation has lodged evidence upon which they have already been heard.  Firstly, it was open to the applicant (or the Federation) to request the Commissioner to hear and determine the question of interest (sub‑section 163(1)) before lodgement of any evidence in support.  Had the applicant been successful in such an action, that would have been the end of the matter and there would have been no opposition, excepting pursuant to action on appeal under sub‑section 163(2).  However, this course of action was not adopted by either party.  In the present circumstances, section 62 of the Act is applicable.  This section reads as follows:

"If there is no opposition to the grant of a standard patent, or, in case of opposition, if the Commissioner's decision, or the decision on appeal from that decision, is that a standard patent should be granted, the Commissioner shall cause a standard patent, in accordance with the prescribed form, to be sealed with the seal of the Patent Office."

The nature of the Commissioner's duty under Section 62 is adequately explained in Tate v. Haskins 53 CLR 594 where (equivalent) section 66 of the Patents Act 1903 was under consideration. At page 611, the Full Court stated:

"A refusal to seal a patent which when sealed would be invalid has a justification which does not extend to objections affecting only matters preliminary to grant. Notwithstanding that, under the procedure described by the statute, an applicant has performed all the conditions upon which according to the terms of the Statute the Comptroller's duty to seal arises, the very fact that the patent would be void when sealed means that the duty is only apparent and not real.  The instrument would be inefficacious because contrary to law.  It cannot be the imperative duty of an officer to issue such an instrument.  Mandamus would not go to compel him to do so."

Thus I must take account of the evidence before me in considering whether or not to send the present application to grant.
         There are, however, two consequences which follow from my conclusion that the Federation has not established locus standi ‑ the first is that the determination of costs will be on a somewhat different basis than had the position been otherwise; the second is that, as there is no opponent, the established practice* of offering that party a chance to be finally heard after permitting amendments to an application following an "interim" decision will not be followed.
The Specification
         The complete specification is entitled "Indoor Cricket" and opens with the statement:
         "The present invention relates to an indoor cricket game."
         Then follows a statement of invention in substantially the same terminology as that of claim 1.  The description continues with a recitation of preferable dimensions and rules for the game.  There is a general description of a playing arena with respect to two figures of drawings, and the specification ends with a statement of fifteen claims of which claims 1 and 15 are independent, with the latter being an omnibus type claim.
         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."

* See for example Perkin‑Elmer v. Varian Techtron 5 IPR 321.

The Evidence
         Mr. Garnsey objected to the nature of a substantial amount of the evidence, some of which he said was flatly inadmissible, some being hearsay and requiring careful weighting, and some being simply incomplete and consequently non‑probative.  To an extent, I agree with Mr. Garnsey.  Nevertheless, there is ample clear evidence on file that there was, at least by mid‑1979, a game played in Australia known as "Indoor Cricket".  It seems that this game had its origins in the State of West Australia : there is somewhat less evidence as to the nature of the game and the equipment used in playing it pre 13 June, 1980, the priority date of the application.  I will review the most relevant portions of this latter evidence below.
Declaration by Edward Robert Croft
         Mr. Croft declares that he was "the original organiser and a co‑ordinator of Waneroo Indoor Cricket Club at the Kingsway (Sporting Complex) Waneroo from its inception to July 1981 at the earliest".  He further declares that the playing of Indoor Cricket commenced during or before July 1979.  Of note in particular is Mr. Croft's exhibit to his declaration, ERC2.
         ERC2 is stated by Mr. Croft to be a plan of the court on which the game was played on or before July 1979.  The plan shows a pitch in the form of a rectangle centred within a much larger rectangle.  The pitch is dimensioned in length, at 22 yards.  There are lines indicating what is clearly intended to be 3 stumps central of the pitch at each end thereof.  The larger rectangle is indicated by descriptive matter to comprise walls of open weave netting, including a roof of the same material.  There are some other lines on the plan, and there is indication of scoring zones as for example ‑ "Back Wall 4 runs".
Declaration by Cecil Grant Bartle
         Mr. Bartle declares that he was an umpire and co‑ordinator of Indoor Cricket at "Kingsway Waneroo" (sic) for approximately 4 years from June 1979.  He exhibits a copy of a diagram of the playing court as from that date ('B').
         The diagram is not as informative as the exhibit tendered by Mr. Croft as to the nature of the pitch, but otherwise includes the same kind of information.
Prior Publication; Novelty
         Claim 1 of the application 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.

I am conscious that the claim makes references to the marking of creases and of bonus run scoring zones.  In my view, these markings do not form part of the apparatus for playing cricket, merely constituting information to be taken into account by the players and umpire, if any.
         What claim 1 defines therefore includes a cricket wicket and stumps transported to an indoor location.  There can be no possible novelty in such a claim especially in view of the evidence showing that indoor cricket has been played since 1979.  These comments apply also to many of the appended claims.  Also, the material of Messrs. Croft and Bartle to which I have referred above clearly constitutes anticipation of claims 1 et al.
There was some argument put to me about failings of the evidence to properly disclose the rules of the game appearing in the present application; as those rules must be read and used in conjunction with the various markings defining creases and scoring zones, patentability was present in the application. I cannot agree with these arguments. In some circumstances, what appears to be mere intellectual information may in fact be something more, e.g. patents have issued for computer print paper with specific line markings and colourings which enable the print‑outs on the paper to be more quickly and accurately read by an operator. I see this as the classical "mechanical effect" of patent law. In the present circumstances the line and zone markings are no more than arbitrary selections positioned to define some boundary ‑ rather like lines marking lanes on a road, or boundaries on a tennis court. As to the matter of disclosure of the rules, the applicant has not sought protection for them, nor could they be protected under the Patents Act. However Mr. Garnsey drew my attention to Cobianchi's Application 70 RPC 199.
         In this case the invention was a pack of canasta cards and the Court decided that there was a potential working interrelation‑
ship between the cards of the pack, seen in the context of the rules of the game.  As a result the pack of (new cards) was considered to be a manner of new manufacture.  In Australia, the corresponding application was refused as being not novel, see (1959) AOJP 2133.  The point of view here was that while the cards of the pack could be considered together as a combination because of the potential working interrelationship between themselves, they differed from the cards of any other pack only in their markings ‑ a matter of information only.
         It was put to me by Mr. Old that there was no novelty to be found anywhere in the application and that even the spring loaded stumps of claim 13 lacked novelty, e.g. in the light of the spring loaded poles used as traffic dividers on the Sydney Harbour Bridge.
         Claims 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 description bridging pages 2 and 2a is a little more precise.  It states that:

"... the stumps are mounted on a base and each stump is individually spring mounted on the base.  Thus, if a stump is struck by a ball it will be moved but the spring mounting will bring it back to its normal position."

What Mr. Old said may or may not be correct;  there is no evidence on this subject.   In any event, claim 13 is not directed to spring loaded stumps per se, but to "An apparatus for playing indoor cricket", as per any preceding claim, in which the sets of stumps are each spring mounted on a base.  Returning now to Mr. Garnsey's submissions about the rules of the game and Cobianchi's application, I agree that the apparatus here claimed may be considered as a combination, and nowhere in the evidence is disclosed apparatus for playing cricket (whether indoor or outdoor) wherein the stumps are spring mounted.  Had there been evidence on this matter, my conclusions might have been different.
         In the circumstances, I find that claim 13 is not anticipated.
Section 40
         After consideration of submissions from both parties to this action I find only two points worth mentioning under this heading.  The first point is that as defined in claim 1, there is a roof overlying the wall means whereas it would appear essential to the invention from a consideration of the specification as a whole that the roof should overlie the whole of the playing area, and should be (more or less) contiguous with the walls, a feature not conveyed appropriately by the term "overlying".
         The second point concerns Mr. Old's contention ‑ with which I agree ‑ that the various zone and boundary markings are not part of the apparatus for playing the game.  Nevertheless various claims refers to "means ... to indicate" and "indicating means".  Such "means" could of course constitute apparatus although no apparatus of any kind has been disclosed for the purposes involved ‑ the description being of markings only.  I have already stated, however, that such markings constitute information only, and in the context of this application cannot contribute patentability.  Two things follow.  Firstly, those claims including apparatus (the "means" claims) are broader than the disclosure.  Secondly, claims specifying nothing more than the claims to which they are appended excepting for "markings" or "lines" are, in effect, redundant in scope to the latter.

Costs
         Sub‑section 14.(d) of the Act provides that the Commissioner may award costs against a party to proceedings before him.  There is no restriction in relation to the "interest" of that party, either in the terms of sub‑section 59(1) or any other section.  Indeed, it is the practice of the Office to award costs in actions where there is no opponent as such, for example where a party to proceedings before the Office has objected to the allowance of an extension of time for lodgement of evidence by another party to the proceedings.
There is also ample authority for the awarding of costs which do not follow the event. See for example Jones v. North Autralian Aboriginal Legal Aid Service Inc. and Another (1986) 82 FLR 264. In the present circumstances whereas the "opponent" may be said to have won the action, yet I have determined that it did not establish its right to mount the action. To be balanced against this, is the fact that the Federation has done a public service by bringing the file evidence to the Commissioner's notice, thus preventing sealing of what would (in my opinion) be a clearly invalid patent. Consequently, I determine that each party will bear its own costs.
Conclusion
         I have found that the majority of the claims of the present application fail on the basis of prior publication by use and that there are section 40 defects in the specification : I have found also that (having regard to the evidence on file) there is patentable subject matter present, which, if properly defined in the statement of claims would, in my view, enable the application to proceed to sealing.  Consequently, I allow the applicant 60 days from the date of this decision in which to propose appropriate action under section 77 of the Act.

(J.L. ROVETA)