Orsta Staalindustri as v BB Bar Company Limited
[2003] APO 56
•23 December 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent: No. 669393 in the name of ÖRSTA STAALINDUSTRI AS
Title: Rockbolt
Action: Request under subregulation 5.5(1) by ÖRSTA STAALINDUSTRI AS for dismissal of an opposition made under subsection 104(4) by BB BAR COMPANY LIMITED
Decision: Issued .
Abstract
This was a request for dismissal of an opposition to an amendment to a patent. The only independent claim of the patent included a feature which commenced with the word "particularly". The amendment sought was to add another independent claim from which this feature had been deleted and made the subject matter of a claim appended to the new independent claim.
The opponent opposed the amendment on the ground that the new independent claim did not in substance fall within the scope of the claims prior to amendment (paragraph 102(2)(a)) and on the ground that the amendment introduced redundancy into the claims as a result of which the claims are not clear (paragraph 102(2)(b)).
The patentee contended that any feature qualified by the word "particularly" was merely a preferred feature, and thus not limiting upon the scope of the claim, and that redundancy has no bearing on clarity.
The request for dismissal was refused in respect of both grounds. Neither of the grounds of opposition was considered so manifestly faulty that it did not admit of argument or that the opposition is so obviously untenable that it cannot possibly succeed. There is case law which provides support for the proposition that redundancy in claims can result in a lack of clarity, and it cannot be automatically inferred that a feature "particularly……" can be deleted from a claim without contravening paragraph 102(2)(b). Moreover, the grounds are inextricably linked such that if one ought not be dismissed then neither should the other.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent No. 669393 in the name of Örsta Staalindustri AS, and a request under subregulation 5.5(1) for dismissal of an opposition made under subsection 104(4) by BB Bar Company limited.
BACKGROUND
Patent 669393 was applied for on 24 August 1993 and was granted on 12 November 1996. The patentee is Örsta Staalindustri AS.
On 23 May 2003 the patentee requested an amendment of the complete specification of the patent under section 104 of the Patents Act. Leave to amend the patent was granted on 4 June 2003, and the request to amend was advertised on 26 June 2003.
On 11 August 2003 BB Bar Company Limited filed a notice of opposition to the amendment under subsection 104(4). This was duly followed by a statement of grounds and particulars on 10 November 2003. On 13 November 2003 the patentee filed a request under subregulation 5.5(1) for dismissal of the opposition, and it is this request which is the subject of the present decision.
The matter was heard in Canberra on 16 December 2003. The patentee, Örsta Staalindustri AS, was represented by Mr Fraser Old, patent attorney of Fraser Old & Sohn, Sydney. The opponent, BB Bar Company Limited, was represented by Mr Geoff Davidson, patent attorney of Halford & Co., Sydney. Both parties appeared by telephone.
THE AMENDMENT
The claims of the patent presently number two and are as follows:
"1. Device for fastening of a rockbolt(12) in a hole(11) in rock, provided with a fastening member, particularly an expansion bushing(14) on a threaded part(13) at the inner end, and at the outer end of the rockbolt a washer like pressure member(18) to press against the rock(19), with a nut(16) on the outer threaded part(15) of the rockbolt, to press against a support element(17) with an opening for supply of cementing grout for filling the cavity between the rockbolt and the rock, to increase the fastening thereof and provide corrosion protection, wherein the rockbolt(12) is provided with a tube(23) extending over at least the greater part of its free length, said tube being provided to supply cementing grout to the inner end of the rockhole, characterized in that the support element(17) has at least a partly spherical shape with an inner space for supply of cementing grout through a hole(27) in the side wall.
2. Device according to claim 1, characterized in that the support element(17) is of spherical shell form and has a threaded opening(21) for the pipe(23), the pipe being provided with an outer thread at least at the outer end, and that the hole(27) in the support member is also threaded."
The amendment which is proposed to the specification would add a further five claims. These are:
"3. A device for fastening a rockbolt in a hole in a rock, said rockbolt being provided with: a fastening member at its inner end, a washer like pressure member at the outer end of the rockbolt to press against said rock, and a nut on an outer threaded part of the rockbolt to press against a support element, said support element having an opening for supply of cementing grout for filling the cavity between said rock bolt and said rock to increase the fastening of said rockbolt in said rock and provide corrosion protection for said rockbolt, wherein said rockbolt is provided with a tube extending over at least the greater part of its free length, said tube being provided to supply said cementing grout to the inner end of said rockhole, characterized in that the support element has at least a partly sherical shape with an inner space for supply of cementing grout through a hole in its side wall.
4. The device according to claim 3, wherein said fastening member is an expansion bushing on a threaded part at the inner end of said rockbolt.
5. The device according to claim 3 or 4 characterised in that the support element is of spherical shell form and has a threaded opening for said tube, and said tube is provided with an outer thread at least at its outer end.
6. The device according to any one of claims 3-5 wherein said hole in said support element through which said grout passes extends through said side wall, is substantially circular and is also threaded.
7. A device for fastening a rockbolt in a hole in a rock, said device being substantially as herein described with reference to the drawings."
A comparison of existing claim 1 with proposed independent claim 3 reveals that the feature "particularly an expansion bushing(14) on a threaded part(13) at the inner end" which is in claim 1 has been omitted from claim 3, and is the subject matter of a claim (claim 4) appended to claim 3.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars states the grounds of opposition to be:
"1.Subsection 102(2)(a): The proposed amendment of the complete specification is not allowable because, as a result of the amendment, a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.
2.Subsection 102(2)(b): The proposed amendment of the complete specification is not allowable because, as a result of the amendment, the specification would not comply with Sub-Section 40(2) or 40(3)."
The particulars relating to ground 1 are given as:
"By deleting the requirement that the fastening member is an expansion bushing on a threaded part at the inner end, proposed claims 3 and 5-7 extend beyond the scope of the claims at acceptance."
10. The particulars relating to ground 2 are given as:
"As a result of the amendment, the claims would be unclear as either claim 3 or claim 4 would be redundant on claim 1."
REQUEST FOR DISMISSAL
11. The reasons for making the request for dismissal are stated to be as follows:
"The whole Opposition is clearly without foundation and/or any prospect of success. Ground No. 1 relies upon Section 102 Sub-Section (2)(a) and alleges that the proposed amended claims do not in substance fall within the scope of the claims before amendment. This is particularized by alleging that the words '…. provided with a fastening member, particularly an expansion bushing (14) on a threaded part (13) at the inner end, and……' of claim 1 require the expansion bushing to be an essential integer which determines the scope of claim 1 whereas the expansion bushing is clearly only a preferred form of the fastening member and thus does not limit the scope of claim 1. That is, although the fastening member is an essential integer of claim 1, the particular form of fastening member, namely an expansion bushing, is not. This is because the term 'particularly' is essentially synonymous with the term "preferably". It follows that the scope of independent claim 1 and the scope of independent claim 3 are essentially identical and thus Ground No. 1 must fail.
Expressed another way, a claim for 'A, particularly A1, and B and C' must have the same scope as a claim for 'A and B and C'. Thus Section 102(2)(a) cannot apply in such a situation.
Ground No. 2 relies upon Section 40 Sub-Sections (2) or (3). This ground is particularized on the basis that the amended "claims would be unclear as either claim 3 or claim 4 would be redundant on claim 1'. Firstly, it is not a requirement of Section 40(2) that the claim(s) be clear, this only a requirement of Section 40(3). Secondly, any alleged redundancy has no bearing on clarity. Therefore Ground No. 2 must fail.
It follows that both grounds, as particularized, are unable to succeed. Therefore the whole Opposition should be dismissed."
LAW
12. 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 .. 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'."
13. On this basis, an opposition will be dismissed only if it is clear that the opposition could not possibly succeed. This approach has been supported by the Federal Court in Stack v Commissioner of Patents (1999) 43 IPR 663. In bringing this action, the onus falls on the patentee to show that the opposition is clearly untenable. Moreover, I agree with the submission by Mr Davidson at the hearing that the motivations of the patentee in seeking amendment of a patent after grant pose far greater risks to the public interest than pre-grant amendments, particularly if the amendment may involve a broadening of the claim. Indeed, it emerged at the hearing that there is in fact court action sitting in the background of this matter.
14. I note also from L'Air Liquide v CIG Ltd 24 IPR 77 in relation to the present circumstances 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."
15. 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."
DECISION
16. It is convenient to turn firstly to the second ground of opposition, which is essentially that the amendment would result in lack of clarity being introduced into the claims. As a preliminary matter, Mr Old took issue at the hearing with the fact that the stated ground of opposition referred to subsection 40(2), whereas the particular to this ground went to clarity, which is a section 40(3) requirement that was also referred to in the ground. I do not see anything untoward with this. The actual ground of opposition is paragraph 102(2)(b), and the wording used for the second ground is the wording of that paragraph. The fact that that paragraph happens to encompass both subsection 40(2) and 40(3) does not, in my view, lead to any confusion that in the present matter it is section 40(3) which is in play in so far as the second ground is concerned.
17. In putting the case for dismissal of the second ground of opposition, it was asserted by the patentee in the request for dismissal that "any alleged redundancy has no bearing on clarity". I think this is very much open to argument. In his submissions Mr Davidson cited Parkinson v Simon 11 RPC 493 at 502 as supporting the contrary view:
"When you find a patent with several claims in it, you must, if you can, so construe those claims as to give an effective meaning to each of them. If there are several claims which are identical with each other, then some of them have no effect at all. It follows from the ordinary rules of construction that you must construe the different claims so as to make them effective if possible, to be different from each other in some respects, or else they are not effective."
18. Mr Old questioned the relevance of this decision, noting that it was of 1894 vintage and that it concerned four omnibus-type claims that were the fashion of the day, to which Mr Davidson responded that it was still current law. I am inclined to agree. For instance, in Re The Upjohn Co 29 IPR 419, the delegate of the Commissioner stated:
"The philosophy behind refusing a claim which is identical in scope to another claim in the same specification (i.e. a redundant claim) is that no effective meaning can be ascribed to the redundant claim, or that it represents (if the application proceeds to grant) a double patenting situation. In Beloit Corporation's Application [1974] RPC 478 at p.483 Graham J held that as there was no difference or no substantial difference between two particular claims, the applicants ought not to be granted a patent:
'I do not consider that the applicants ought to be granted a specification in which two independent claims of the same scope are present. To allow the grant of such a specification would be against the public interest and its effect would be to sacrifice clarity and succinctness, which is required by section 4, and to condone avoidable obscurity and ambiguity.'"
19. In light of this, in my view it cannot be said that the opponent's second ground of opposition "is so obviously untenable it cannot possibly succeed".
20. Turning now to the first ground of opposition, it would seem that the patentee is on somewhat firmer ground in seeking to have this ground of opposition dismissed. It is true that an integer of a claim commencing with a word such as "particularly" is conventionally treated as an exemplification, rather than a per se feature of the claim. Consequently, so the reasoning goes, its presence in or absence from the claim should not impact upon the scope of the claim and thus paragraph 102(2)(a) should not be contravened.
21. However, the situation would not appear to be quite as clear cut as that. Firstly, although such a feature may not be a per se feature of the claim, it is an integer nonetheless and it would appear that its deletion has at least the potential to alter the scope of the claim, although this will not always be the case (see Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning v Commissioner of Patents (1972) AOJP 3524). Moreover, the decision in Asahi v WR Grace 22 IPR 491, which dealt with the meaning of the word "comprises", has shown that words used in claims must be given an interpretation appropriate to the context of their use. The question as to what is the interpretation of "particularly" which is appropriate to the present context is, I believe, properly left to a full-fledged opposition proceeding. This was brought home by both parties in the present proceeding having recourse to a dictionary to support their point of view, suggesting, in the words of Barwick CJ quoted above, that there is a real question to be determined here.
22. In determining whether the first ground of opposition ought to be dismissed, I am also mindful that the first ground is, as Mr Davidson put it, inextricably linked to the second ground. In its request for dismissal the patentee referred to the redundancy of the claims as being an "alleged redundancy". That suggests that the patentee may wish to run an argument that claims 1 and 3 are not redundant. If the claims were not redundant, then it would seem to follow that claim 3 must be either narrower in scope or broader in scope than claim 1. There has been no indication that the patentee intends to contend for the former possibility. That leaves the latter possibility. It therefore seems only proper for the opponent to have available to it the first ground of opposition as a counter to this potential line of argument by the patentee.
23. Thus, in respect of the first ground of opposition, I am not convinced that this is a situation that does not admit of reasonable argument.
CONCLUSION
24. There is nothing before me establishing that the grounds of opposition are so manifestly faulty that they do not admit of argument, or that the opposition is so obviously untenable that it cannot possibly succeed.
I refuse the request to dismiss the opposition, in its entirety.
Pursuant to regulation 5.10(1)(b), I direct that the period determined by regulation 5.8(1A) be extended to 3 months from the date of this decision.
COSTS
25. Ordinarily in proceedings such as these, costs follow the event. The parties were in agreement that this was the appropriate approach in this matter, and I see no reason to depart from it. I thus award costs against Örsta Staalindustri AS.
Ed Knock
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Fraser Old & Sohn, Sydney
Patent attorneys for the opponent : Halford & Co., Sydney
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