Jott Australia Pty Ltd v ECT Coldry Pty Ltd - [2010] APO 21

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Jott Australia Pty Ltd v ECT Coldry Pty Ltd [2010] APO 21

Patent Application: 2004274520

Title:Dryer, drying method and drying plant

Patent Applicant:  ECT Coldry Pty Ltd
Opponent:  Jott Australia Pty Ltd
Delegate:  Dr S.D.Barker
Decision Date:  29 September 2010
Hearing Date:  Written submissions filed on 17 August 2010 and 24 August 2010
Catchwords:  PATENTS – application to serve further evidence – public interest considered – documents prima facie relevant – evidence capable of being given some weight – application granted

Representation: Patent applicant: Davies Collison Cave
Opponent:Watermark

Patent Application: 2004274520

Title:Dryer, drying method and drying plant

Patent Applicant: ECT Coldry Pty Ltd
Date of Decision: 29 September 2010
DECISION
The application to serve further evidence is granted.
I direct that the time for service of evidence in answer is extended to 23 January 2011.
Costs awarded against ECT Coldry Pty Ltd.
REASONS FOR DECISION

Patent application number 2004274520 in the name of ECT Coldry Pty Ltd is under opposition by Jott Australia Pty Ltd. Evidence in support was completed on 26 October 2009. Evidence in answer has not yet been served. On 15 July 2010 Jott filed an application to serve further evidence. ECT have objected to that request. The parties provided submissions to the Commissioner in the form of letters, and the matter has been decided on the basis of those submissions.
The relevant law
Further evidence is governed by regulation 5.10. The relevant subregulations state:
(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion - ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
In the circumstances, I am satisfied that ECT has been notified, and the parties have had an opportunity to make representations. The question that must be considered is whether I am satisfied that it is appropriate to allow the service of the further evidence. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33 on the operation of regulation 5.10(5) in relation to extensions of time. The general principles that flow from these decisions are as follows.
a)The power is discretionary:    Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay:            The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c)The public interest:                The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
*         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
*         The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*         The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the parties:    The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247). It is also relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
These considerations are equally relevant to the determination of the present request for further evidence. Previous decisions of the Commissioner on further evidence illustrate different aspects of these considerations, but do not represent binding rules.
The facts
The statement of grounds and particulars as filed contained a reference to two citations, WO 03/00131 (which is referred to as D1 in the particulars of the opposition) and US 1482812 (which is referred to as D2 in the particulars of the opposition). The evidence filed as evidence in support of the opposition is a two page declaration by Raymond Ludwig John Tettman, a patent attorney. The declaration annexes a copy of D1 and D2. On 15 July 2010 the opponent filed an amended statement of grounds and particulars, which added reference to documents D3 – D6, which are stated to be relevant to the ground of lack of inventive step. The further evidence is a Statutory Declaration of Giacomo Salvatore Gasparini, the Managing Director of the opponent company. The declaration is accompanied by seven exhibits:
Exhibit GSG-1 is a copy of the Final Office Action of the USPTO in relation to a corresponding application;
Exhibit GSG-2 is a copy of AU 2002311092, which is document D1 in the statement of grounds and particulars as filed;
Exhibit GSG-3 is a copy of US 3589027, which is document D3 in the statement of grounds and particulars as amended;
Exhibit GSG-4 is a copy of an extract from a book titled “Brown Coal”, which is document D6 in the statement of grounds and particulars as amended;
Exhibit GSG-5 is a copy of a drawing;
Exhibit GSG-6 is a copy of US 5671804, which is document D4 in the statement of grounds and particulars as amended; and
Exhibit GSG-7 is a copy of US 2245664, which is document D5 in the statement of grounds and particulars as amended.
The purpose of Mr Gasparini’s declaration is to introduce a copy of the Final Office Action of the United States Patent Office, and
“to explain why the corrugated plates disclosed in the Jott reference [which is discussed in the Final Office Action, and is particularised in the present opposition as D1] are completely equivalent to the ‘baffles’ (or louvers) disclosed in the Roberts reference (D2 in the present proceedings). … He provides numerous examples which demonstrate the use of corrugated plates and louvers in equipment associated with heat and mass transfer, or drying. The examples include numerous US patents dating back as far as 1937 and a standard text book on brown coal drying, produced by the State Electricity Commission of Victoria, Australia, in 1952. … As Mr Gasparini explains in his own words, this information would be commonly known and understood by a person skilled in the art in Australia and there is no invention involved in applying this information as claimed in the opposed application.”
The objection
The applicant’s objection can be summarised as:
- The opponent deliberately forewent the opportunity to provide detailed evidence, indicating it is not a serious opposition;
- The opponent is merely belatedly trying to overcome deficiencies in its case;
- Mr Gasparini is not a person skilled in the art, as he is a person who is inventive;
- Mr Gasparini is not independent;
- There is no explanation of why the documents were not found earlier; and
- The documents are not relevant, as there is no evidence they meet the requirements of section 7(3).
Application of the facts to the law
(i) Explanation of delay
It appears that the Final Office Action of the USPTO caused the opponent to recognise a deficiency in the evidence it had provided. It appears to be a reasonable inference that the opponent is merely repeating the action in the USPTO rather than running their own case. The delay has been explained, but not to the credit of the opponent.
As an aside, I note that in this case the opponent has adopted the unusual practice of serving the notice of opposition, statement of grounds and particulars and evidence in support at the same time. While a more traditional approach may have avoided the need to serve further evidence, it is laudable for a party to attempt to expedite the evidence process.
(ii) The public interest
The nature of the evidence that Mr Gasparini is serving is readily apparent, and it is clear that it is related to the ground of inventive step.
The applicant has suggested that the evidence is not relevant or otherwise not important. I agree that Mr Gasparini is not an independent witness, and might be outside the scope of a person skilled in the art. However, this criticism does not mean that his evidence is not capable of being given weight by a hearing officer. I am satisfied that Mr Gasparini’s evidence is relevant, and that his evidence is capable of being given some weight by a hearing officer.
It is also submitted by the applicant that the documents D3 – D6 have not been shown to meet the requirements of section 7(3), and consequently they are not relevant. The specification under opposition relates to an apparatus that can be used to dry materials. The documents D3 – D6 appear on their face to relate to apparatus that can be used for drying. Consequently there is a prima facie relevance. While it is possible that these documents might not meet the test of ascertained, understood and regarded as relevant that is laid down in section 7(3), there is no evidence that suggests this is a likely outcome.
I am satisfied that it the public interest favours allowing the further evidence.
(iii) The interests of the parties
It is readily apparent that the parties have legitimate interests that lie in opposing directions.
The balance of considerations
I note that the public interest favours allowing the further evidence, and the other considerations are of lesser significance. On balance, I am satisfied that the application to serve further evidence should be granted.
Other matters
Where further evidence is granted, the Commissioner may impose reasonable terms (under regulation 5.10(4)(b)). Normally, the terms are to permit the other party to serve responding evidence. In the present case, the applicant is still in the process of preparing evidence in answer, so this is not necessary. Any evidence responding to the further evidence can be included in the evidence in answer which is being prepared. However, it is reasonable to allow the applicant an extended period to prepare its evidence in answer in order to address this new evidence. The applicant has already requested, and paid the fee for, an extension from 23 July 2010 to 23 October 2010. The applicant has subsequently requested that instead the time for serving evidence in answer be extended to 15 October 2010, and the fee already paid be refunded.
Given that it has been uncertain whether the further evidence would be allowed, this would not give the applicant a sufficient period to respond to the further evidence. I consider the fairest outcome would be achieved by granting the extension to 23 October 2010, and directing that the time for serving evidence in answer will be extended by a further 3 months, i.e. until 23 January 2011. Any further extension beyond that time will need to be requested under regulation 5.10.
The opponent has been successful, so it is appropriate to award costs against the applicant, ECT Coldry Pty Ltd.
Dr S.D.Barker
Delegate of the Commissioner of Patents