Microsoft Corporation v InterTrust Technologies Corporation - [2004] APO 9

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 756500 in the name of InterTrust Technologies Corporation

Title: Systems and methods using cryptography to protect and secure computer environments

Action: Opposition under section 59 by Microsoft Corporation and objection to an extension of time to file evidence in answer under regulation 5.10(2)

Decision: Issued 20 April 2004.
Abstract

None of the reasons outlined in the applicant's extension of time application under regulation 5.10(2) provide a satisfactory explanation of the delay in the preparation of evidence in answer. The applicant also failed to provide evidence which indicated any real effort by them in progressing their evidence.
However, their letter of 18 March 2004 in relation to their co-pending regulation 5.10(1) request suggests that the main reason for the delay might be the applicant's belief that amendments currently proposed to the specification would obviate a key novelty citation. While this approach appears to have been misguided, it does demonstrate the applicant's interest in defending their application. In such a case, the public interest lies in dealing with the opposition on its merits. The interests of the applicant and the public in having the hearing determined on its merits outweigh any disadvantages to the opponent in delaying evidence in answer.
The extension of time to file evidence in answer was therefore allowed.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 756500 in the name of InterTrust Technologies Corporation, Opposition under section 59 by Microsoft Corporation and objection to an extension of time to file evidence in answer under regulation 5.10(2)

BACKGROUND

Patent Application 756500 (57835/01) was filed on 6 August 2001 in the name of InterTrust Technologies Corporation ("InterTrust") as a divisional application of 36815/97 which in turn claimed priority from US basic application 08/689754 filed on 12 August 1996.
Patent Application 756500 underwent modified examination based on a granted US patent 6,157,721 which is now subject to infringement/revocation action in the United States. The Australian application was advertised accepted on 16 January 2003 and a notice of opposition was filed on 16 April 2004 by Microsoft Corporation ("Microsoft") who served their statement of grounds on 16 July 2003. Evidence in support was completed on 11 November 2003 after the opponent applied for (and was granted) a one month extension of time to complete their evidence. Evidence in answer was therefore initially due on 11 February 2004.

On 11 February 2004, the applicant requested a first three month extension of time until 11 May 2004 to serve their evidence in answer. The opponent objected to this request and the matter was set for hearing in Canberra on 23 March 2004. The opponent was represented by Stephen Burley of counsel instructed by Kim O'Connell and John Stinson of Mallesons Stephen Jaques who appeared by phone. The applicant filed written submissions rather than attend the hearing.
RELEVANT LAW
According to regulation 5.8(2), the time for serving evidence in answer…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2004] APO 9
Decision Date: 20 April 2004

CaseChat Overview and Summary

Microsoft Corporation lodged an opposition to a patent application by InterTrust Technologies Corporation, which was accepted for advertising on 16 January 2003. Microsoft subsequently filed a Statement of Grounds on 16 July 2003 and completed their evidence in support on 11 November 2003. InterTrust requested an extension of time until 11 May 2004 to file their evidence in answer, but Microsoft objected to the extension. The matter was heard on 23 March 2004. The main legal issue was whether the Commissioner of Patents should grant an extension of time for InterTrust to file their evidence in answer. Relevant principles from previous cases state that the Commissioner must balance various factors, including the reason for the delay, the significance of the evidence to be adduced, and the interests of the parties and the public.

InterTrust argued that the delay was due to the complexity of the case and the amendments made to Microsoft's Statement of Grounds and Particulars. However, the Commissioner was not satisfied that these reasons adequately explained the delay, as there was no evidence of any real progress made by InterTrust in preparing their evidence. The Commissioner also considered that the proposed amendments to the patent specification, which InterTrust hoped would overcome a key novelty citation, appeared misguided. Nevertheless, the Commissioner believed that InterTrust was genuinely interested in defending their application, and that the public interest would be best served by allowing the extension of time to file evidence in answer.

The Commissioner allowed the extension of time for InterTrust to file their evidence in answer but warned that they would not be able to cite the proposed amendments to justify further extensions. The Commissioner also awarded costs against InterTrust for the unreasonable objection, as InterTrust had not provided a satisfactory explanation for the delays.

ORDER

1. InterTrust is granted an extension of time until 11 May 2004 to file their evidence in answer.
2. Costs are awarded against InterTrust.

Orders