Kabel Rheydt Aktiengesellschaft v Belden Australia Pty Ltd

[1998] APO 70

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 685562 in the name of KABEL RHEYDT AKTIENGESELLSCHAFT

Title:          An optical fibre with colour coding.

Action:          Application under reg 5.5 for dismissal of the opposition under s.59 filed by BELDEN AUSTRALIA PTY LTD; hearing.

Decision:          Issued            

Abstract

The particulars for the opposition grounds under s.18(1)(a) and s.40(2) do not provide any material facts. These grounds of opposition are dismissed.

The particulars for the opposition grounds under s.18(1)(b)(i) and s.18(1)(b)(ii) are inadequate in some respects. Belden allowed an opportunity to provide further and better particulars to rectify these inadequacies. If Belden does not avail itself of this opportunity then it will not be able to rely on these respective current particulars in the substantive opposition.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 685562 by KABEL RHEYDT AKTIENGESELLSCHAFT and opposition thereto under section 59 by BELDEN AUSTRALIA PTY LTD, and an application for dismissal of the opposition.

background

Patent application 685562 was filed as a PCT application on 20 December 1994 by Kabel Rheydt Aktiengesellschaft (hereafter referred to as “Kabel"). The PCT application was filed at the European Patent Office and designated Australia, and was published with an International Search Report.  The PCT application also underwent International Preliminary Examination before entering the national phase in Australia.  The application has an earliest possible priority date of 23 December 1993.  The application including the claims was amended during examination in Australia and was advertised accepted on 22 January 1998. 

On 22 April 1998 Belden Australia Pty Ltd (hereafter referred to as “Belden”) filed an opposition to the grant of a patent on the application.  On 22 July 1988 Belden served its statement of grounds and particulars under reg. 5.4.  On 21 August 1998 Kabel filed an application for dismissal of the opposition.  Four pages of reasons were given in support of the dismissal application.

A hearing on the dismissal application was held on 19 November 1998 in Canberra.  Kabel was represented by Dr J McCann, patent attorney of Spruson & Ferguson.  Belden was not represented at the hearing, however Mr A Ward, patent attorney of Griffith Hack, provided written submissions on its behalf prior to the hearing.

THE STATEMENT OF GROUNDS AND PARTICULARS

The invention of specification 685562 relates to "An optical fibre with colour coding".

Belden's statement of grounds and particulars indicates the grounds of opposition as those related to the requirements of ss. 18(1)(a), 18(1)(b), 40(2) and 40(3) of the Patents Act 1990. It gives particulars for these grounds thus:

"PARTICULARS - S.18(1)(a) and S.18(1)(b)(i)

The invention as defined in any one of claims 1 to 26 of Australian Patent Application No. 685562 is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies and is not novel when compared with the prior art base as it existed before the alleged priority date of that claim.  The following publications and use of products in Australia are considered to be a non-exhaustive list of the prior art base:
1)        EP 581680 - Cited against corresponding European application 736194
2)        EP 436221 - Cited against corresponding European application 736194
3)        EP 562259
4)        FR 2648270
5)        DE 3636268
6)        DE 3427835
7)        JP 57-040203 - Cited against corresponding European application 736194
8)        Publication of brochure and pamphlets on an optical fibre colouring machine with
band marking facilities made by Medek & Schorner - Austria.
9)        Use in Australia of an optical fibre colouring machine with band marking facilities made by Medek & Schorner - Austria.

Items 1 to 6 were cited against the corresponding PCT application PCT/EP94/04241.
JP 57-040203 was cited against AUB 685562.

PARTICULARS - S.18(1)(b)(ii)

The invention as defined in any one of claims 1 to 26 of Australian Patent Application No. 684550 (sic) does not involve an inventive step when compared with the prior art base in combination with the common general knowledge in the art as it existed at the alleged priority date of the claim in question.  The following publications are considered to be a non-exhaustive list of the prior art base:
…
[the same 9 items as listed above are repeated]

It was part of the common general knowledge of those skilled in the art of optical fibres in Australia at the earliest claimed priority date of application 685562 to use band marking machines to band mark optical fibres.  It was well known to those skilled in the art at that priority date that band marked cable could then be coated with a translucent or transparent layer to protect the band marking.

PARTICULARS - S.40

…
[5 specific matters are listed in relation to Section 40(3)]

The ambiguities and other Section 40 problems listed here are not deemed to be an exhaustive list.  The opponent reserves the right to raise further Section 40 allegations against the opposed specification.

The opponent also reserves the right to amend the particulars of opposition as further prior art and relevant information comes to light during the preparation and service of the evidence in respect of this opposition."

THE LAW ON DISMISSAL

Regulation 5.5 covers dismissal of an opposition.  It allows an applicant to request the Commissioner to dismiss an opposition after the statement of grounds and particulars has been served under reg 5.4.  The test for dismissing a ground of opposition is the same test as for dismissing the whole opposition.  The test the Commissioner applies in this regard is similar to that for summary dismissal which is described in General Steel Industries Inc v Commissioner for Railways (1964) 112 CLR 125. The relevant passage is:

"… 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".  Hence it is reasonable to say that an opposition will only be dismissed if the Commissioner is satisfied the opposition cannot possibly succeed.

An opposition may be unsubstantiated even if it requires argument to establish the opposition should be dismissed.  For example the General Steel Industries case (supra) states as follows:

"... in my view great care must be exercised to ensure that under the guise of achieving expeditious finality a plaintiff is not improperly deprived of his opportunity for the trial of his case by the appointed tribunal. On the other hand, I do not think that the exercise of the jurisdiction should be reserved for those cases where argument is unnecessary to evoke the futility of the plaintiff's claim. Argument, perhaps even of an extensive kind, may be necessary to demonstrate that the case of the plaintiff is so clearly untenable that it cannot possibly succeed."

Thus argument in support of dismissal of the opposition should not argue the substantive issues of the opposition; it must establish the opposition cannot possibly succeed without going into the details of the opposition.  The statement of grounds and particulars filed in the opposition forms the basis for assessing the merits of the dismissal application.

There have been many instances in recent years where the application of the dismissal provisions has arisen for patent opposition actions.  The Commissioner's decisions in these cases have indicated a range of matters that may need to be considered in deciding such dismissal actions.  I will refer to relevant matters later in this decision when discussing specific grounds argued in support of the present dismissal application.

THE SUBMISSIONS

Before referring to the opponent's (Belden) submissions, I will briefly mention the applicant's reasons given on, and supporting, the application for dismissal.  As mentioned earlier, these reasons covered 4 pages.  These reasons provided in general terms an indication of the matters contained in the statement of grounds and particulars which the applicant viewed as the basis for seeking dismissal of grounds of opposition.  In short the applicant contended that the grounds relied upon were not sufficiently particularised and the applicant did not know the case it had to answer - dismissal was therefore appropriate.

Belden's submissions
Apart from referring to the general conditions relevant to a statement of grounds and particulars and dismissal proceedings, Belden comments on the specific grounds and particulars filed in this opposition.  As to the ground concerning Manner of Manufacture, the submission refers to "the threshold requirement of an alleged invention of whether it is apparent on the face of the specification …" and remarks that "there is adequate information contained in the particulars … for the opponent to make a good argument along the lines of the full Federal Court decision in Ramset."

With regard to the novelty ground, the submission suggests that no further details of the particularised patent documents are needed because the documents are known to the applicant from search or examination actions on the PCT and Australian applications.  Northing is said about document (8) or use (9) in the particulars.  The submission remarks that "Any further information the applicant may seek involve matters which are properly dealt by the evidence or at the substantive hearing."  On the "Inventive step" ground, the submission asserts that the particulars satisfy the requirement of giving "brief material facts" regarding the common general knowledge and person skilled in the art.  As to the documents listed in the particulars under this heading, the submission refers to the earlier point made about these documents being known to the applicant given earlier prosecution actions.

On the "non-limiting statements" in the statement of particulars, Belden says it is not claiming rights other than those provided by reg 5.9 if the situation arises.  The submission also refers to the public interest aspect and indicates that if the opposition is dismissed, there may be unresolved important issues which could result in the grant of an invalid patent.

Kabel's submissions
At the hearing Dr McCann provided detailed submissions against the particulars to support Kabel's application for dismissal.  Essentially he elaborated on the reasons given on the application itself.  He also provided detailed submissions on the law and practice regarding dismissal actions.  Rather than summarise these submissions now, I will refer to the relevant matters in the decision section following.

DECISION

The function of the statement of grounds and particulars is, I believe, well understood.  Its function is to give the applicant fair notice of the case to be met and define the issues of the opposition.  To achieve this function the statement of particulars must set out the material facts on which each ground of opposition is based.  (See for example Mobay Corp v The Dow Chemical Co (1992) 24 IPR 379). There are various other aspects of the particulars that may apply given the circumstances. I will now consider each of the particulars of the statement in terms of the dismissal application.

S. 18(1)(a) particulars (re not a manner of manufacture)
The opponent has provided one statement of particulars referring to this opposition ground and that of s.18(1)(b)(i) (re not novel). The statement refers to a comparison of the invention with "the prior art base" and lists 8 publications and a use in a "non-exhaustive list of the prior art base". From the wording, it is not readily clear whether the ground concerning manner of manufacture is intended to rely on the prior art base items mentioned. What however is clear is that the statement does not indicate the basis for the lack of manner of manufacture attack. I note that Belden's submissions refer to "the threshold requirement of an alleged invention of whether it is apparent on the face of the specification" and the Ramset decision of the Federal Court, however there is no such references in the statement.  The particulars do not inform the applicant of the case it has to face on the question of manner of manufacture: it fails to define the issues of this ground of opposition.  It fails to state any material fact, that is a fact which is necessary for the purposes of formulating this ground of opposition.  Where no particulars support a ground of opposition the ground is open to dismissal under reg 5.5 (see L'Air Liquide v CIG Ltd (1992)
24 IPR 77). Accordingly I dismiss the ground of opposition based on s.18(1)(a).

S. 18(1)(b)(i) particulars (re not novel)
In regard to the opposition ground of lack of novelty, the particulars clearly refer to the 9 listed items of the "prior art base".  As such the statement refers to material facts for supporting the contention that the claimed invention lacks novelty.  Kabel's submission for dismissal in this case centre on the fact that the patent documents, items 1 to 7, have been raised against this application, or an equivalent, during relevant prosecutions and are not seen by Kabel as relevant to render the present claims not novel.  They say there has been no indication given of the relevance of each document by way of page or line references to identify to the applicant the parts of the documents relied upon to support this opposition ground.  Further they say the document listed at item 8 and the use listed at item 9 are insufficiently identified and detailed for the applicant to know what case it will need to answer based on these items.

As to the 7 patent documents particularised, I see no basis to dismiss the relevancy of these documents simply because they were identified elsewhere against this or an equivalent application.  In L'Air Liquide v CIG Ltd (supra) at 88 the hearing officer had cause to consider a submission similar to that advanced by Kabel and rejected the proposition that an opposition should be dismissed because an examiner, during examination, had considered documents specified in the statement of particulars.  In doing so the hearing officer referred to the fact that examination and opposition processes were different, particularly with regard to, firstly, the input of expert witnesses in the construction of documents and attesting to the state of the common general knowledge, and secondly, onus of proof considerations.  I agree with those conclusions and add that findings during prosecution before another patent office on a corresponding application may not hold true under Australian patent law. 

Regarding Kabel's point about identifying the relevant parts of the 7 patent documents, I do not see the absence of such details as unreasonable in the circumstances of this case.  There are only seven documents in question and the applicant, given prior prosecution references to them, should be reasonably familiar with their disclosures and hence the likely basis for any lack of novelty attack.  Furthermore, the number of documents at issue here is unlike the large number of documents the hearing officer had cause to consider in ICI Plc v Irenco Inc and Others (1993) 26 IPR 154, and wherein he referred to the need for further particulars about the documents listed (at p. 164). Thus the particulars regarding items 1 to 7 are satisfactory.

Item 8 refers to a brochure and pamphlets about a machine, and item 9 refers to the use of a machine in Australia.  Kabel submits that the opponent has provided only limited information about these documents and alleged prior use and their relevancy to the opposition ground.  In particular Kabel say that for these items there is no "brief description of their relevance to the ground together with brief material facts to support a prima facie case, for example, (a) the date and place of use, (b) the person or persons to whom the invention was allegedly disclosed or sold" (per Dupont De Nemours v Dowelanco (1995) 30 IPR 25 at 37). I agree with Kabel in this regard. These items do not provide the applicant with reasonable details of the case to be answered. The brochure and pamphlets and the use require further particularisation of, firstly, their dates of public disclosure or use, and secondly, the nature of those disclosures or use and their relevance to the opposition ground. I propose to allow the opponent an opportunity to provide further and better particulars in this regard.

As a final point, the particulars refer to the 9 items of the prior art base identified as "a non-exhaustive list".  As no other items of the prior art base other than the 9 items listed are identified, there are no other items particularised.  Thus I consider that the particulars only provide a basis for arguing lack of novelty with regard to the 9 items expressly listed.

S. 18(1)(b)(ii) particulars (re not involve an inventive step)
Firstly I note the error in the application number reference at the start of this particular, noting also that the correct number is subsequently used.  To me the intention of the statement of grounds and particulars as a whole relate to application 685562, and the number error in this particular of itself does not warrant dismissal of this ground of opposition.

In this particular the 9 items "of the prior art base" mentioned in the previous particular are repeated.  In addition there is a brief description of one element of alleged "common general knowledge" of those skilled in the art of optical fibres in Australia, plus a statement of something said to be "well known" to those skilled in the art. 

Kabel submits that the 9 items listed are irrelevant to the lack of inventive step ground of opposition for essentially similar reasons as raised for the novelty ground.  The submission points out that no particulars are provided as to which portions of the documents the opponent intends to rely in order to support its claim.  Further the submission argues that details regarding the common general knowledge and the relevant person skilled in the art are inadequate.

In my view the particulars adequately identifies one item of common general knowledge.  If the statement referring to what was "well known" to those in the art was meant to refer to another item of the common general knowledge, as Belden's submissions seem to imply, then this should have been clearly stated.  However I believe that it is reasonable to interpret this statement as indicating a second item of alleged common general knowledge.  Regarding the identification of the person skilled in the art, I believe the particulars by reference to "those skilled in the art of optical fibres" has adequately identified the person skilled in the art, that is, the particular field of technology relevant to the subject matter - not the actual person.

With regard to the 9 listed items of the prior art base, it is true that the particulars do not identify portions of the documents or use and how the opponent may intend to make use of these items of prior art in arguing lack of inventive step.  However given the requirements of s.7 of the act and the first sentence of the particulars, I believe it is reasonable to assume that the opponent is relying on certain prior art information in the respective items of prior art with common general knowledge to develop a case of lack of inventive step.  Following what I concluded above under the novelty heading, for the 7 patent documents the applicant should be reasonably familiar with the disclosure of these documents, and in line with what is stated in the particulars, I believe that the applicant could reasonably anticipate the line of attack by the opponent.  I do not believe that the particulars under this heading require any further elaboration with respect to the 7 patent documents.  However, for similar reasons as expressed under the novelty heading, the particulars with regard to items 8 and 9 of the prior art base are inadequately particularised to provide the applicant with sufficient details of the case to answer.  I propose to allow the opponent an opportunity to provide further and better particulars with respect to prior art base items 8 and 9.
Finally, similar to my conclusion for the novelty particulars, only those items of the prior art base expressly listed in the particulars provide a basis for arguing lack of inventive step.

S.40 particulars
The opponent has included 5 matters as specific particulars with regard to the opposition ground of non-compliance with s.40(3) of the act. These identify material facts to support this opposition ground. There are no particulars identified for the opposition ground of non-compliance with s.40(2). Whilst the opponent has referred in the particulars to the matters raised as not being "an exhaustive list" and reserving "the right to raise further s.40 allegations", these statements provide no material facts and so the particulars only provide a basis for arguing the specific s.40(3) matters identified. As there are no particulars to support the opposition ground under s.40(2), I dismiss that ground of opposition.

CONCLUSION

I have found that the statement of particulars includes no particulars to support the opposition grounds based on s.18(1)(a) and s.40(2) of the Patents Act 1990. Accordingly I have dismissed those grounds of opposition.

At the hearing Kabel submitted that the Commissioner has the option to direct the opponent to provide further and better particulars if certain particulars are found inadequate. I agree with that submission. In this case I have found that certain particulars in support of, respectively, the assertions of lack of novelty and lack of inventive step are inadequate. Despite these inadequacies I have found sufficient merit in the particulars against these opposition grounds and believe that it is appropriate to allow Belden the opportunity to provide further and better particulars. Thus under reg. 5.10(1) I direct Belden to provide within 28 days from the date of this decision further and better particulars for those particulars related to prior art base items 8 and 9 for the opposition grounds under s.18(1)(b)(i) and s.18(1)(b)(ii). I also direct that if Belden does not avail itself of this opportunity then it will not be able to rely on the current particulars concerning prior art base items 8 and 9 in the substantive opposition.

The time for service of evidence in support as determined by reg. 5.8(1)(a)(iii) is within 3 months from the date of this decision.

COSTS

Cost normally follow the event.  Kabel have not been successful with their application for dismissal of the opposition.  However I have dismissed several grounds of opposition and identified deficiencies in some of the particulars in Belden’s statement of grounds and particulars which need to be rectified for a proper opposition case to be known.  In the circumstances I think that Kabel is entitled to its costs, and so I award costs against Belden.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney.

Patent attorneys for the opponent   :  Griffith Hack, Melbourne.