Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd
[2002] APO 11
•27 March 2002
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 662163 in the name of MODULINE PTY LTD.
Title: Ducting System Assembly.
Action: Request under Regulation 5.5(1), by MODULINE PTY LTD, for dismissal of a ground of opposition made under Subsection 104(4) by ELECTRIC CABLE DUCT SYSTEMS PTY LTD.
Decision: Issued .
Abstract
The applicant sought to have the first ground of opposition dismissed, being of the view that it would merely involve reconsideration of a previously decided matter.
To dismiss a ground of opposition, on the basis that the opposition would be a rehearing of a previous matter, can only be done where the matter has previously been decided and the issue pressed in the opposition can only involve a reconsideration of the decided matter (ICI Australia Operations Pty Ltd v Commercial Polymers Pty Ltd [1997] APO 70 followed). It was found that there was scope for argument that would not involve reconsideration of a previously decided matter.
The request for dismissal was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 662163, in the name of Moduline Pty Ltd and a request under sub-regulation 5.5(1) for dismissal of a ground of opposition made under sub-section 104(4) by Electric Cable Duct Systems Pty Ltd.
BACKGROUND
Patent Application No. 662163 in the name of Moduline Pty. Ltd. (Moduline) was advertised accepted on 24 August 1995. The application was opposed by Electric Cable Duct Systems Pty Ltd (ECDS). In his decision dated 13 May 1998 (Electric Cable Duct Systems Pty. Ltd. v Moduline Pty. Ltd. [1998] APO 28), the delegate found that there were valid objections to the specification in relation to lack of novelty and non-compliance with section 40, and allowed the applicant the opportunity to amend.
To this end Moduline filed amendments on 10 July 1998, and further proposals for amendment were filed on 13 July and 31 August 1998. These amendments were advertised accepted on 22 October 1998. An opposition to these amendments was filed by ECDS on 18 January 1999, and in his decision of 9 November 2000, the delegate refused the proposed amendments as they did not satisfy the requirements of sections 102(2)(a) or 102(2)(b) of the Patents Act 1990.
A further request to amend the complete specification (the 7th statement of proposed amendments) was received on 8 December 2000. ECDS subsequently opposed allowance of the amendments under sub-section 104(4), filing its statement of grounds and particulars on 26 November 2001. On 21 December 2001, Moduline applied for dismissal of part of the section 104 opposition under regulation 5.5 and it is this request that is the subject of the present decision.
The matter came to a hearing in Canberra on 28 February 2002. The applicant was represented by Mr James Cherry, patent attorney of the firm Freehills Carter Smith Beadle, Melbourne. The opponent was represented by Mr Graham Cowin of the firm Phillips Ormonde & Fitzpatrick, Melbourne. Both parties appeared by telephone.
THE STATEMENT OF GROUNDS AND PARTICULARS
The Statement of Grounds and Particulars lists two grounds as follows:
"A. The Grounds of Opposition relied on by the Opponent are as follows:
1. Section 102(1)
As a result of proposed amendments the complete specification claims matter not in substance disclosed in the specification as filed.
2. Section 102(2)(b)
As a result of proposed amendments the complete specification would not comply with subsection 40(2) or (3).
The opponent reserves the right to contest any assertion that a proposed amendment is for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, the complete specification.
The particulars against each ground are:
B. The Particulars relating to the first Ground are as follows:
1.0 Section 102(1)
1.1 Claims: 1 and 9
Proposed Amendment: "...the inner wall ... is adapted to facilitate, in situ, the creation of an opening in the wall for the displacement of a portion of the wall at any point along its length and has an opening or a displaceable portion...".
There was no disclosure in the specification as filed of a ducting system assembly with the provision of an inner wall having both a facility adapted to create an opening in the wall or displace a portion of the wall and a per se opening in the wall or displaceable portion of the wall. Present claims 1 and 9 define only an inner wall having an opening or displaceable portion being a passage way for cable. Although using the facility will result in an opening or displaced portion, the specification as filed does not contemplate that created opening or displaced portion as well as a preexisting opening and displaceable portion."
Further particulars relating to the second ground of opposition are also provided, but need not be considered further in assessing whether ground 1.0 of the opposition should be dismissed.
THE REQUEST FOR DISMISSAL
The request for dismissal was filed on 21 December 2001 and included the following reasons:
"Ground 1.0 relates to Section 102(1), namely matter not in substance disclosed in the specification as filed. The only particular provided relates to a proposed amendment to claims 1 and 9 as follows:
...the inner wall... is adapted to facilitate, in situ, the creation of an opening in the wall for the displacement of a portion of the wall at any point along its length and has an opening or a displaceable portion...
The particular is that there is no disclosure of a wall having both a facility adapted to create an opening in the wall or displace a portion of the wall and a per se opening in the wall or displaceable portion of the wall. We submit that this argument cannot possibly succeed and is appropriate for dismissal.
The decision of the Commissioner's Delegate issued 9 November 2000 relating to a previous set of amendments proposed in this application determined that both of these features were disclosed. There can be no argument that the latter feature was disclosed in the specification as filed, a conclusion consistent with the decision on the substantive opposition issued 13 May 1998 (see second last paragraph on page 6). Further, the question of disclosure of the first of these features was argued and clearly decided by the Commissioner's Delegate in his 9 November 2000 decision that it was in substance disclosed. Thus, unless the opponent yet again seeks to re-open the issue already decided (contrary the to Mole Engineering decision), the issue as to whether both these features are in substance disclosed has already been determined and thus there is no possible basis on which this ground can succeed as disclosed in the Statement."
DECISION
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) (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, as in this case, 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".”
On this basis, an opposition will be dismissed only if it is clear that the opposition could not possibly succeed. This approach has been applied by the Federal Court in Stack v Commissioner of Patents (1999) 43 IPR 663. It is further apparent from L'Air Liquide v CIG Ltd 24 IPR 77 that rather than dismiss the opposition in its entirety I may dismiss an opposition in relation to particular grounds. In bringing this action, the onus falls on Moduline to show that the ground of opposition is clearly untenable and cannot possibly succeed.
I note that an action for dismissal of an opposition is not intended to be a de facto hearing of the opposition. Barwick CJ in General Steel (supra) warns in this regard that:
"...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."
He then goes on to add there might be occasions where extensive argument may be necessary to demonstrate that the case of the plaintiff is clearly untenable (see also Ronex Properties Ltd v John Laing Construction Ltd (1983) QB 389 at 408). However, he concludes:
"But once it appears that there is a real question to be determined whether of fact or law and that the rights of the parties depend on it, then it is not competent for the court to dismiss the action as frivolous and vexatious and an abuse of process."
At the hearing, both parties were in substantial agreement regarding the law on dismissal. No suggestion was made that the ground in question did not relate to section 102(1), or that the ground in question was inadequately particularised. Rather, the primary concern was whether or not the first ground of the opposition would involve a re-hearing on a previously decided issue. My attention was directed to the decision of the High Court in The Queen v Smith; ex-parte Mole Engineering Pty Ltd (1981) 147 CLR 340, from which it is clear that a determination made by a delegate in relation to a particular issue may not be varied subsequently except on appeal.
Moduline submitted that the objection raised by ECDS in ground 1.0 was, in substance, identical to an objection which had been previously raised and rejected in the opposition of 13 May 1998. It was further asserted that an attempt to re-open this issue had been rejected by the delegate in the decision of 9 November 2000, and that the current attempt to re-open this issue should also be dismissed.
To dismiss this ground of opposition I must be satisfied that the ground could only involve a re-hearing on a previously decided matter. I am not convinced that it does. As was pointed out by Mr Cowin,
“….previous delegates have not made any conclusions on whether there is a substantial disclosure in the original specification of a duct having in combination, for example, an inner wall having an opening therethrough and a facility for creating an opening therethrough.” (emphasis added)
I agree with this analysis. The issue put before the delegate in the first opposition concerned an allegation by ECDS that the specification as filed did not disclose any adaptation of an inner wall to facilitate the creation of an opening by a longitudinal groove. The delegate was not asked to consider, or reach any conclusion regarding whether the specification as filed disclosed if “the inner wall.…is adapted to facilitate the creation of an opening….and has an opening or a displaceable portion” as claims 1 and 9 are proposed to be amended. Similarly, I do not consider that the delegate in the section 104 opposition of 9 November 2000 addressed this specific issue.
I am not convinced that ECDS would merely be presenting “new argument on an old issue” as proffered by Moduline. On this issue, I find the views of the hearing officer in ICI Australia Operations Pty Ltd v Commercial Polymers Pty Ltd [1997] APO 70 (24 December 1997) particularly apposite:
"To dismiss an opposition, in whole or in part, on the basis that the opposition would be a rehearing of a previous matter, can only be done where the matter has previously been decided and the issue pressed in the opposition can only involve a reconsideration of the decided matter".
It follows that I will not dismiss this ground of opposition, as I believe that there is scope for argument that would not involve reconsideration of a previously decided matter.
I am conscious that it is not appropriate in a dismissal action to consider the substance of the matters raised. This must be left for determination in the substantive opposition. However, I do note that at the hearing both parties expressed diametrically opposed views on the construction of claims 1 and 9 as proposed to be amended. There is certainly room for debate from both parties as to whether the feature of an inner wall having a facility for the creation of an opening and an opening was disclosed in the specification as filed. I also note that any significant differences in wording between claims as proposed to be amended and claims as previously considered are likely to render any argument about rehearing or reconsideration otiose.
Furthermore, arguments presented by Mr Cherry on what a person skilled in the art would understand from the specification as proposed to be amended tend to suggest that there is a real question to be determined. I believe that if I was to conclude otherwise I would fall into the error warned against by Barwick CJ in General Steel (supra). Though the matter may ultimately prove to be one that is very simple to resolve by applying appropriate principles of interpretation, it is a matter that clearly admits to argument and evidence and to consider it further in the present circumstance would be to improperly pre-empt the opposition process.
In summary, I am not convinced by the applicant’s submissions that the first ground of the opposition is untenable. The applicant has not discharged the onus upon them to show that the opposition is “manifestly groundless”, "so manifestly faulty that it does not admit of argument" or that it “discloses a case which the court is satisfied cannot succeed”.
CONCLUSION
I have found that the applicant has not been able to establish that the first ground of opposition is clearly untenable as would be required for me to order dismissal.
Pursuant to sub-regulation 5.8(1A)(c) the time for service of evidence in support of the opposition commences from the date of this decision.
COSTS
In actions before the Commissioner, costs normally follow the event. I see no reason to depart from this, and award costs against the applicant, Moduline.
R. W. J. Finzi
Delegate of the Commissioner of Patents
Patent Attorneys for the applicant: Freehills Carter Smith Beadle, Melbourne
Patent Attorneys for the opponent: Phillips Ormonde & Fitzpatrick, Melbourne
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