International Game Technology v Aristocrat Technologies Australia Pty Ltd

[2003] APO 35

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 711501 in the name of International Game Technology.

Title:          Electronic Game Method and Apparatus with Hierarchy of Simulated Wheels

Action:          Application under regulation 5.5 for dismissal of the opposition under section 104 filed by Aristocrat Technologies Australia Pty Ltd

Decision:          Issued            .

Abstract

The opposition under section 104 as outlined in the statement of grounds and particulars is clearly untenable and should be dismissed. The absence of relevant particulars cannot be overcome with reference to prosecution history, and comments provided by the opponent in that respect, nor is a direction for further and better particulars appropriate in the circumstances.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 711501 in the name of International Game Technology and application under regulation 5.5 for dismissal of the opposition under section 104 filed by Aristocrat Technologies Australia Pty Ltd

BACKGROUND

1. The history of this matter will be apparent from my decision in International Game Technology v Aristocrat Technologies Australia Pty Ltd [2002] APO 73. Subsequently, the applicant has sought to overcome the upheld grounds of opposition through amendment of the specification under section 104. Ultimately leave to amend was granted and advertised on 19 December 2002. A notice of opposition was filed on 18 March 2003 and the statement of grounds and particulars on 18 June 2003. On 10 July 2003 the applicant filed its application for dismissal of the opposition and the matter came to hearing in Canberra on 26 August 2003.

1. International Game Technology was represented by Mr R Miller and Mr G van Rensburg of Spruson & Ferguson, Sydney and Aristocrat Technologies Australia Pty Ltd by Mr C Berman of F B Rice & Co, also of Sydney.

THE STATEMENT OF GROUNDS AND PARTICULARS

1. The statement of grounds and particulars is in the following terms:

"We ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD, A.C.N. 001 660 715 of 71 Longueville Road, Lane Cove, New South Wales 2066, Australia, provide the following information in support of the Notice of Opposition in relation to an opposition to the amendment of Australian Patent Acceptance No. 711501 in the name International Game Technology.

GROUND

(I) Section 102

The amendment is not allowable under Section 102 of the Patents Act 1990.

PARTICULARS

(I) Section 102

(a)The amendment is not allowable under Section 102 of the Patents Act 1990 because, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(b)The amendment is not allowable under Section 102 of the Patents Act 1990 because, as a result of the amendment, a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.

(c)The amendment is not allowable under Section 102 of the Patents Act 1990 because, as a result of the amendment, the specification would not comply with subsection 40(2) or (3)."

DECISION

1. The principles to be applied in considering a request for dismissal are well established and are similar to the reasons for summary dismissal which are described in General Steel Industries Inc v Commissioner for Railways (NSW) and others (1964), 112 CLR 125:

"It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited .. to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense".

At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or "so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument"; "so to speak apparent at a glance"."

1. On this basis, an opposition will be dismissed only if it is clear that the opposition could not possibly succeed. It is also clear that "if an opponent cannot provide particulars in support of an alleged ground of opposition, the opponent has no basis to oppose on that ground" L'Air Liquide v CIG Ltd 24 IPR 77.

1. Mr Berman's view was that the statement does in fact provide sufficient particularisation in the circumstances of a section 104 opposition. I disagree. Particulars are the material facts that are relevant to the grounds of opposition and which indicate, prima facie, the case that will ultimately be proven by evidence and otherwise argued in the substantive determination. In this regard the delegate in E.I. Dupont De Nemours and Company v. Dowelanco [1994] APO 27 considered the earlier decision in Mobay Corp. v Dow Chemical Co. 24 IPR 379 and stated that:

"I understand the "material facts" of Mobay (supra) to mean the facts needed for the opponent to establish a prima facie case, but without legal argument, argument based on the facts, corroborative evidence, or references to legal precedent. In my view, an opponent needs to provide more than just a mere allegation of the case to be answered."

The present statement of particulars merely paraphrases the subsections of section 102 and as such articulates the grounds of opposition and does not provide any particulars - See Fujisawa Pharmaceutical Co Ltd v Banyu Pharmaceutical Co Ltd (1994) APO 52 and paragraph 11.2.2 of Volume 3 of the Manual of Practice and Procedure. It is true that the level of particularisation required will vary from case to case (Alvern Norway A/S v. Trans Global Concepts Pty Ltd [1997] APO 11) but one might expect for a section 104 opposition they would include, at least, a brief description of the specific subject matter causing the particular section 102 requirements not to be satisfied.

1. In the event that I did not find sufficient particularisation, Mr Berman invited me to give the statement a purposive construction as in Borden Inc. v Elkem A/S (1992) IPR 146 and to give consideration to the prosecution of the section 104 amendments. With respect, Borden was not a case where the absence of material facts was overlooked but involved a finding that the statement was not clear. When given a purposive construction it was found to adequately establish the opponents case including sufficient particularisation of common general knowledge. ORA Vax Inc. v CSL Limited [1998] APO 18 and other cases referred to by Mr Berman similarly were not cases where there was no particularisation of material facts. Rather the question was about the clarity of the case to be answered in light of substantial particularisation.

1. Mr Berman is correct in reminding me that I should not dismiss the opposition unless I am clearly of the view that the opposition could not possibly succeed. I am also mindful of the comments of Kitto J. in Kaiser Aluminium and Chemical Corporation v Reynolds Metal Company (1969) CLR 136 at page 158:

"In my opinion, however, 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 that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."

1. I think the same could well be said about an opposition under section 104. However, it is one thing to seek to remedy inadequate particulars in support of a serious opposition but addressing the total absence of particulars in a case where the opposition may or may not be serious is quite another matter. Certainly the opponent has provided regulation 10.2(7) comments on the applicants earlier proposed amendments but not those on which leave has now been granted. The comments also related largely to matters only relevant to the section 59 opposition. On this basis I would have had some doubt that a serious opposition was in train. However, given comments were made previously, the absence of relevant particulars at this stage without any genuine or realistic explanation suggests to me that the real concerns with the section 104 amendments have been addressed and the opposition under section 104 is merely an ambit claim in the broader dispute between the parties.

1. An opposition without a statement of particulars is untenable and cannot, in these circumstances, be corrected by amendment of the statement (Mobay Corp. v Dow Chemical Co. (supra), American National Can Companyv Cryovac Inc. [2000] APO 20.). Consequently I will dismiss the opposition.

CONCLUSION

1. I have found that the opposition is not supported by any particulars and, as a result, that it is "so manifestly faulty that it does not admit of argument". Pursuant to regulation 5.5, I dismiss the opposition under section 104.

COSTS

1. In actions before the Commissioner costs normally follow the event and consequently I award costs against Aristocrat Technologies Australia Pty Ltd.

P M Spann

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :    Spruson & Ferguson, Sydney

Patent attorneys for the opponent  :     F B Rice & Co, Sydney