J.M. van der Hoeven BV v Houweling Nurseries Oxnard, Inc
[2015] APO 4
•6 February 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
J.M. van der Hoeven BV v Houweling Nurseries Oxnard, Inc. [2015] APO 4
Patent Application: 2010328690
Title:Greenhouse and forced greenhouse climate control system and method
Patent Applicant: Houweling Nurseries Oxnard, Inc.
Opponent: J.M. van der Hoeven BV
Hearing Officer: P M Spann, Deputy Commissioner of Patents
Decision Date: 6 February 2015
Hearing Date: Written submissions filed on 16 and 24 December 2014
Catchwords: PATENTS – application for dismissal of an opposition – grounds dismissed in part – further and better particulars – costs awarded against the opponent.
Representation: Patent applicant: Davies Collison Cave
Opponent:Dark IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010328690
Title:Greenhouse and forced greenhouse climate control system and method
Patent Applicant: Houweling Nurseries Oxnard, Inc.
Date of Decision: 6 February 2015
DECISION
I dismiss ground 1 and ground 2 to the extent reflected in paragraphs 2.1, 2.2, 2.3.5, 2.3.6, 2.5 and 2.6 of the Statement of Grounds and Particulars.
I direct that further and better particulars be filed by the opponent in relation to lack of novelty (ground 2 paragraphs 2.3.1 – 2.3.4) within 14 days of the date of this decision.
I award costs against the opponent J.M. van der Hoeven BV.
REASONS FOR DECISION
Houweling Nurseries Oxnard, Inc. is the applicant for patent application 2010328690. J.M. van der Hoeven BV has opposed the grant of a patent. The opponent filed a statement of grounds and particulars (SGP) on 12 November 2014, and the applicant has requested partial dismissal of the opposition. The parties have filed written submissions in support of their positions.
Dismissal of oppositions is provided for in regulation 5.17 of the Patents Regulations. An applicant must make a request within one month of the Commissioner giving them a copy of the statement of grounds and particulars. As the dismissal was requested on 9 December 2014, this requirement has been met.
The circumstances in which the Commissioner will dismiss an opposition are well established: “whether there are prospects of success that are real and not fanciful or merely arguable” (Re Preference Manufacturing (Aust) Pty Ltd and Commissioner of Patents [2012] AATA 393 at [14]).
The Commissioner may dismiss a particular ground of opposition (see for example L'Air Liquide, SA pour L'Etude et L'Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd [1992] APO 1; 24 IPR 27). However, the Commissioner should not dismiss a ground of opposition merely because it is not supported by some of the particulars (Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd [1992] APO 39; 24 IPR 368). The Commissioner may also direct further and better particulars “where a material fact is pleaded, but not with sufficient particularity” (B.C. Cairns Australian Civil Procedure; Mobay Corporation v The Dow Chemical Company [1992] APO 25).
In this case the opponent has relied on each of the grounds specified in section 59, that is:
“(a) that the nominated person is either:
(i) not entitled to a grant of a patent for the invention; or
(ii)entitled to a grant of a patent for the invention but only in conjunction with some other person;
(b) that the invention is not a patentable invention;
(c) that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).”
Within the SGP grounds (a), (b) and (c) are labelled grounds 1, 2 and 3 respectively. For ground 2 the opponent specifies non-compliance with section 18(1)(a) manner of manufacture, 18(1)(b)(i) novelty, 18(1)(b)(ii) inventive step, 18(1)(c) useful and 18(1)(d) secret use. Each in effect forms a separate ground of opposition.
Following a statement of the grounds and before the particulars, the opponent provides a list of documents relied on and a section labelled “A” which contains particulars of an assertion that one of more of the claims are not entitled the claimed priority date. The particulars then follow organised into sub-paragraphs. For example, for ground 2, paragraphs 2.1 and 2.2 relate to whether the claims define a manner of manufacture. I will follow the numbering scheme adopted in the SGP for the purpose of this decision.
The applicant has asserted that items A, 1, 2.1, 2.2, 2.3, 2.5 and 2.6 should be dismissed. To simplify matters the opponent has indicated it agrees that items 1, 2.1, 2.2, 2.3.5, 2.3.6 and 2.6 should be removed. Consequently I will dismiss the opposition in relation to ground 1 and ground 2 to the extent reflected in paragraphs 2.1, 2.2, 2.3.5, 2.3.6 and 2.6.
There remains then objection to part A, the particulars going to lack of novelty (other than reflected at paragraphs 2.3.5 and, 2.3.6) and the particulars in relation to utility at paragraph 2.5. Part A relates to priority dates and is cross-referenced by the particulars supporting the ground of lack of novelty and lack of inventive step. It forms part of those particulars and is not objectionable merely because it is presented separately in the SGP. Otherwise paragraph A.3 clearly indicates the feature that is asserted not to be disclosed in the priority document and I consider that in context this represents adequate particulars in relation to this aspect of the opposition.
10. The particulars given in relation to lack of novelty are criticised on the basis of:
i) 2.3.2 only refers to common general knowledge in a general sense; and
ii) 2.3.3 and 2.3.4 only refer to one of 12 documents in a general sense.
11. In relation to the second point it is said that there is no indication of the particular relevance of any of the documents, the relevant parts of the document have not been identified and for 2.3.4 no indication is given of which documents may be considered as a single source of information. I agree that, while some material facts may be provided, the particulars given do not give a reasonable indication of the case to be answered in relation to novelty. At the very least I would expect a clear statement of each of the documents or other information that is relied on for the assertion of lack of novelty and a brief indication of their relevance, including which documents are considered to form a single source of information (E.I. Dupont de Nemours and Company v Dowelanco [1994] APO 27). The information currently given for each of D1 to D12 is inadequate for this purpose. Consequently I will direct further and better particulars in relation to this ground.
12. For utility (paragraph 2.5) the applicant asserts that the particulars merely restate the ground of opposition. I also find that the SGP provides no material facts to support an assertion of lack of utility. The opponent states in its submissions merely that it will not be in a position to know whether the claimed invention will achieve the promise asserted in the description without further experimentation by its expert but that it is inappropriate to suggest that the ground has no reasonable prospect of success. With respect it is not possible to determine prospects of success when no material facts are provided. Without that the case is merely speculative and the opposition in this regard must be dismissed.
Conclusion
13. I will dismiss ground 1 and ground 2 to the extent reflected in paragraphs 2.1, 2.2, 2.3.5, 2.3.6, 2.5 and 2.6 of the Statement of Grounds and Particulars. I will also direct that further and better particulars be provided in relation to lack of novelty (ground 2 paragraphs 2.3.1 – 2.3.4). A consequence of the opponent not complying with this direction will be dismissal of this ground of opposition.
Costs
14. The opponent has conceded that certain grounds and particulars should be removed from the SGP. I have also directed that further and better particulars be filed in relation to one ground and as such the applicant has been largely successful in the proceeding. Consequently I will award costs against the opponent.
P M Spann
Deputy Commissioner of Patents
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