Nicole Louise Bennett v Pong Research Corporation LLC
[2015] APO 7
•24 February 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Nicole Louise Bennett v Pong Research Corporation LLC. [2015] APO 7
Patent Application: 2009313338
Title:Radiation redirecting external case for portable communication device and antenna embedded in battery of portable communication device
Patent Applicant: Pong Research Corporation LLC.
Opponent: Nicole Louise Bennett
Hearing Officer: P M Spann, Deputy Commissioner of Patents
Decision Date: 24 February 2015
Hearing Date: Written submissions filed on 22 January and 5 February 2015
Catchwords: PATENTS – application for dismissal of an opposition – opposition limited to section 40 grounds – grounds have no reasonable prospect of success – opposition dismissed – costs awarded against the opponent.
Representation: Patent applicant: FB Rice
Opponent:Murray Trento & Associates
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009313338
Title:Radiation redirecting external case for portable communication device and antenna embedded in battery of portable communication device
Patent Applicant: Pong Research Corporation LLC.
Date of Decision: 24 February 2015
DECISION
I dismiss the opposition.
I award costs against the opponent Nicole Louise Bennett.
REASONS FOR DECISION
Pong Research Corporation LLC. is the applicant for patent application 2009313338. Nicole Louise Bennett has opposed the grant of a patent. The opponent filed a statement of grounds and particulars (SGP) on 24 November 2014, and the applicant requested dismissal of the opposition.
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 24 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 only on the grounds specified in section 59(c) and specifically that the complete specification does not comply with subsection 40(2) or (3).
The provisions of section 40 relevant to the present application are those that existed prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. That is:
“(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent—end with a claim or claims defining the invention; and
(c) where it relates to an application for an innovation patent—end with at least one and no more than 5 claims defining the invention.
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.”
During examination of the present application amendments were made to the consistory statement within the description. The SGP then asserts at paragraph [7] that:
“It is submitted that as a result of the amendment at page 4 (as detailed in item 6 of this Statement), the feature of incorporating the antenna into the battery (which has always been clearly described as being an essential feature of the invention) has now been rendered optional and therefore an inessential feature, and as such claim 10 is not fairly based on the matter described in the complete specification as filed.
It is further submitted that the amendment at page 4 introduces uncertainty and ambiguity into the specification as the feature of incorporating the antenna into the battery, which was clearly described and claimed as an essential feature of the invention in the complete specification as filed, is now described as optional and therefore inessential.
In view of these reasons, it is therefore submitted that the claims, and in particular omnibus claim 10, lack clarity and therefore do not meet the requirements of Section 40(3).”
Claim 10 of the specification is a typical omnibus claim:
“10. A wireless device substantially as herein before described with reference to the accompanying drawings.”
In summary the applicant seeks dismissal on the basis that no valid particulars have been provided and more particularly:
a)The act does not require a claim to be fairly based on matter described in the specification as filed;
b)The requirement for fair basis is not to be assessed on a comparison of “essential features” (Lockwood v Doric [2004] HCA 58);
c)Being in standard form the wording of claim 10 is clear;
d)The opponent admits that "the feature of incorporating the antenna into the battery has now been rendered optional and therefore an inessential feature" indicating that it is very clear what the specification describes; and
e)No particulars are provided for any ground in relation to section 40(2).
10. In Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 at [18] the delegate provided a useful summary of key principles to be applied in considering dismissal of an opposition:
“An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.
In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than fanciful issue to be decided. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident. This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.
A dismissal will generally be inappropriate where expert evidence is required to determine an issue. However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.
Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success. However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed. If no particulars have been provided in relation to a ground of opposition then it may be considered to have no reasonable prospects of success.
Care must be taken not to cause an injustice to a party by dismissing an opposition.”
11. The opponent’s submissions emphasise that the case it seeks to make is clear to the applicant. However a lack of clarity is not the only basis for dismissal of an opposition and indeed more generally results in a direction for further and better particulars. A very clear case may nevertheless have “no reasonable prospects of success” and therefore is subject to dismissal.
12. Here it is apparent that the opponent takes issue with the allowability of the amendment to the description made during examination. It however does not have a right to oppose the application on that basis. Rather an amendment wrongly allowed in examination may have the effect of altering the relevant priority date as provided by section 114 of the Act.
13. To the extent that the opposition is then particularised as a lack of clarity and fair basis only in relation to claim 10 it is unusual. Omnibus claims define the subject matter to be protected by the patent by reference to the body of the specification and are generally taken to be limited to the preferred embodiment described therein. In Raleigh Cycle Co. Ltd. v H Miller and Co. Ltd. (1948) 65 RPC 141 Lord Morton stated at [157]:
“For many years it has been a common practice to insert, as the last claim in a patent specification, a claim on the same lines as Claim 5 in the present case. I think that the reason why such a claim has been inserted, in the present case and in countless other cases, is as follows. The patentee fears that his earlier claims may be held invalid, because they cover too wide an area or fail sufficiently and clearly to ascertain the scope of the monopoly claimed. He reasons as follows: “If I have made a patentable invention and have described the preferred embodiment of my invention clearly and accurately, and without any insufficiency in the directions given, I must surely be entitled to protection for that preferred embodiment, and that protection may fairly extend to cover anything which is substantially the same as the preferred embodiment.” ”
14. As noted in Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260 “the language [of s40(3)] points to a comparison between the claims and what is described in the specification only”. In that case it very difficult to identify any situation where an omnibus claim relying on the description in the way achieved in claim 10 can be said to lack fair basis. For this reason the SGP resorts to referring to a lack of fair basis “in the complete specification as filed” which, as the applicant points out, has no basis in law. Therefore it is readily apparent that in this case an opposition on the basis of lack of fair basis has no prospects of success.
15. The wording of Claim 10 is also clear per se. However an omnibus claim may be unclear where “the description referred to is insufficiently specific to define the scope of the monopoly claimed” (PhotoCure ASA v Queen’s University at Kingston [2005] FCA 344 at [123]. An example is where the preferred embodiment cannot be identified. However the normal rules of construction apply and each case is to be determined on its merits (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019). The fact that some effort may be required to construe the specification, or that expert evidence needs to be taken into account, does not mean the description or claim referring to it is unclear. Only an unresolvable issue of construction will generally result in a finding of lack of clarity in opposition proceedings.
16. Here neither the SGP, or the submissions, suggest that a preferred embodiment cannot be identified in the specification nor, in my view, is there any reasonable prospect that such an issue would become apparent in light of expert evidence. The particulars merely identify an issue which, if not irrelevant, can be readily addressed by applying the rules of construction so that the scope of the omnibus claim can be determined. It could not reasonably be expected to lead to a finding that claim 10 is of indeterminate scope and expert evidence, rather confirming that finding, is more likely to assist the delegate in reaching a preferred construction. Consequently I consider that there is clearly no reasonable prospect for the opposition to succeed on this basis either.
17. Since no other particulars are provided to support the grounds of opposition I find that it is open to be dismissed. The opponent’s submissions go to the potential for injustice to the parties and makes reference to divisional applications from the present application. I do not see the relevance of this aside from the fact that the opponent appears to be particularly concerned with clarity in the scope of patent protection that the applicant may ultimately obtain. While this is understandable, the opposition must be considered on its merits in the context of the legislative scheme. An opposition that clearly has no reasonable prospects of success merely achieves delay in the grant of a patent and wasted expenditure of effort which is detrimental to the applicant. It also will not achieve any benefits in clarifying the scope of patent rights. Consequently there is also no public interest in permitting such proceedings to continue.
Conclusion
18. I find that the opposition as a whole clearly does not have any reasonable prospects of success and should be dismissed.
Costs
19. I do not find any basis to deviate from the normal rule that cost follow the event. Consequently I will award costs against the opponent.
P M Spann
Deputy Commissioner of Patents
0
4
0