Pacific Enterprises (Aust) Pty Ltd v Assa Abloy Australia Pty Limited - [2012] APO 73

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pacific Enterprises (Aust) Pty Ltd v Assa Abloy Australia Pty Limited [2012] APO 73

Patent Application: 2008243070

Title:A Lockable Chain Winder

Patent Applicant:                   Assa Abloy Australia Pty Limited
Opponent:  Pacific Enterprises (Aust) Pty Ltd
Delegate:  Dr S.D.Barker
Decision Date:  19 July 2012
Hearing Date:  Written submissions filed on 7 May 2012 and 14 May 2012
Catchwords:  PATENTS – application for dismissal of an opposition – material facts provided for most grounds – some grounds dismissed due to a complete absence of material facts – time for service of evidence runs from the date of this decision – no award of costs

Representation: Patent applicant: Phillips Ormonde Fitzpatrick
Opponent:Actuate IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008243070

Title:A Lockable Chain Winder

Patent Applicant: Assa Abloy Australia Pty Limited
Date of Decision: 19 July 2012
DECISION
I dismiss the following grounds: entitlement, fully describe the invention, defining the invention.
I direct that the opponent has three (3) months from the date of this decision to serve evidence in support.
I make no award of costs.
REASONS FOR DECISION

Assa Abloy Australia Pty Limited are the applicant for patent application 2008243070. This application is a divisional of 2003201398. Pacific Enterprises (Aust) Pty Ltd have opposed the grant of a patent. The opponent filed a statement of grounds and particulars on 13 February 2012, and the applicant has requested dismissal of the opposition. The parties have filed written submissions in support of their positions.
Dismissal of oppositions is provided for in regulation 5.5 of the Patents Regulations. An applicant must make a request within one month of the service of the statement of grounds and particulars. As the dismissal was requested on 13 March 2012, 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 grounds and particulars of the opposition
The statement of grounds and particulars specifies the basis of the opposition, and sets the limits on the opposition. The statement specifies the following grounds of opposition:
The patentee is not entitled to the patent (or is entitled in conjunction with another person)
The invention is not a manner of manufacture
The invention is not novel
The invention does not involve an “innovative” step
The invention is not useful
The specification does not comply with section 40 for various reasons
“Other” relevant sections of the Patents Act
The applicant has asserted that all grounds of opposition should be dismissed.
Entitlement
The applicant stated that there are no material facts provided. The statement sets out a chain of logic that says that the invention as claimed is beyond the scope of the invention in the parent application (and as a consequence the present application is not entitled to priority from the parent). As a result, “the patentee has not shown derivation from the true inventors to the patentee”. It is further asserted that the Notice of Entitlement does not disclose the listed inventor transferred title to the applicant. It is not apparent to me that there are reasonable prospects of success for this ground. The opponent stated in its submissions that it no longer presses this ground. This ground should be dismissed.
Manner of manufacture
The Statement sets out matters that the specification admits are known, and then states that “there is no invention disclosed on the face of the opposed application in light of the BACKGROUND ART section”. It is also stated that there “is no working relationship between the use of the known integers which leads to a patentable invention”.
The applicant pointed out that manner of manufacture is assessed on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15, 183 CLR 655). The statement of grounds and particulars refers to what is admitted in the specification “and the related family documents”, which suggests that it is necessary to look beyond the face of the specification. Consequently there is some uncertainty whether all of the necessary information is disclosed in the specification.
It is reasonable to read the statement as asserting that the listed matters are disclosed in the specification. A cursory inspection of the specification shows that at pages 1 to 2 there is a description of certain prior art devices, and the integers of which they are composed. The opposition on this ground is not merely fanciful. I will not dismiss this ground.
Novelty
The applicant states that the particulars at paragraph 14 state that the invention lacks novelty when “compared to any one or more of the following documents in combination with common general knowledge and/or mechanical equivalents”. The applicant rightly points out that, for the purposes of novelty, a document is not combined with common general knowledge or mechanical equivalents. The material facts for the ground of lack of novelty are the citations, and if necessary references to the relevant parts of the citations. These matters are provided in paragraph 14. The inclusion of confusing information about how the issue will be argued does not detract from the listing of alleged citations.
Further particulars of novelty are given in paragraph 15. The applicant points out that no publication date for the disclosures is asserted. While this is true, the particulars do not have to include an assertion of publication date – that is a matter of evidence. However, the applicant has pointed out that the particulars list various patent applications that are numbered according to the year in which they were filed. It is readily apparent that applications filed in 2003, 2005, 2006 and 2008 could not have been published before 2002. I have not considered whether “whole of contents” novelty might be relevant as it is not necessary to do so.
The applicant has also asserted that the “alleged prior art documents identified in paragraph 15 of the Statement of Particulars fail to disclose a lockable chain winder having any key cylinder let alone a key cylinder arrangement defined in the claims”. In general, a consideration of the disclosure of the citations should be left for the substantive consideration of the opposition. At the dismissal stage, even if the citations were before me, it would not be appropriate to conduct more than a cursory inspection.
I conclude that the particulars provide material facts of the ground of lack of novelty, and I will not dismiss this ground.
Inventive step
The applicant pointed out that the grounds of opposition refer to “innovative” step. However, innovative step is not a ground of opposition to a standard patent. At paragraph 18 the particulars refer to “inventive” step, but at paragraph 19 there is a reference to section 7(4) and 7(5) – being the provisions relevant to innovative step. At paragraph 20 the particulars again refer to “inventive” step.
The particulars for this ground are clearly very confusing. The key question is whether the Statement should be construed as raising the ground of “innovative” step, or “inventive” step. The approach to construction of written documents was discussed in Commonwealth Scientific and Industrial Research Organisation v H.B.H. Technological Industries P/L [1992] APO 9, 24 IPR 90. Where a document contains errors, it is appropriate to adopt a purposive construction, and try to give a sensible meaning to the document. However, as I noted in the CSIRO matter, there is a limit to purposive construction:
“the Office should not construe a document to give it a meaning which is not suggested by the document itself”
Looking at the Statement as a whole, and understanding that it is a Statement in relation to an opposition to a standard patent application, I consider that the more reasonable construction is that the opponent is relying on the ground of lack of inventive step, and the references to innovative step are misstatements. While it is regrettable that errors of this nature should be present in a Statement, I believe that the intent of the document is sufficiently clear - the opponent is raising the ground of lack of inventive step. Material facts of the ground of lack of inventive step are provided, so it is not appropriate to dismiss this ground.
Useful
The applicant states that there are no material facts provided for this ground. The opponent has stated:
“The Opponent will lead evidence from the person skilled in the art as to why the invention as claimed in claim 13 will not work. In the absence of such evidence, the Commissioner is unable to consider whether there is no reasonable prospect of success and should not dismiss this ground of opposition.”
The opponent is not correct. The opponent is required to provide the material facts of their case in the Statement, and cannot simply wait until the service of evidence to make the case apparent. It is the Statement that must be examined, not evidence that has not yet been prepared. The Statement contains a single particular:
“Claim 13 is unclear and is generally based on claim 1 of AU 2003201398. The omission of the essential features of having a key barrel and ‘locking means on the drive component to form part of a chain locking mechanism’ indicates that this claim with [sic] not satisfy the object clauses.”
It is necessary to carefully consider this passage of the Statement. It seems that the ground relates only to claim 13, and is based on an allegation that the absence of the ‘locking means on the drive component to form part of a chain locking mechanism’ means that the subject matter will not achieve the object of the invention. I consider that there are material facts, and this ground should not be dismissed.
Section 40 matters
The first two section 40 matters in the grounds are fully describe the invention, and defining the invention. These grounds are identified as 3a and 3b. No particulars are listed for these grounds. In the absence of particulars, it follows that there are no reasonable prospects of success. The opponent has stated that they do not press these grounds. These grounds should be dismissed.
The third section 40 matter in the grounds is clarity. The applicant asserts that there are no material facts to support this ground. I disagree. There are a number of terms that are said to be “unclear”, such as “’engages with’ is unclear as to the nature of the engagement” and “use of the term ‘worm thread’ is unclear”. I am satisfied that there are some particulars relevant to the ground of clarity. There are also other particulars that seem to question how a feature will contribute to the operation of the device, which may not be relevant to clarity. Given that there are some relevant particulars, it is unnecessary to decide whether these other matters could be relevant to clarity. Overall, there are some particulars for the ground of lack of clarity.
The final section 40 matter is fair basis. The applicant stated that there are no particulars provided for this ground, and discusses each paragraph of the particulars. I agree that there are some confusing matters raised in the particulars. There is an assertion that there is a lack of fair basis on the parent document, which is a matter that goes to the priority date of the claims. At paragraph 34 the particulars say that there is a lack of fair basis due to the omission of certain features. I interpret this as an assertion of lack of internal fair basis, and not as an assertion of lack of fair basis on the parent. This point at least represents material facts.
“Other” sections
The applicant points out that section 59 is an exhaustive list of the grounds of opposition. The particulars in paragraphs 38 and 39 raise two matters that are not grounds under section 59. The first is section 114, which is a priority date provision. I consider that this is not a ground, and not capable of dismissal (the same approach was taken by the delegate in Sepracor Inc v Wyeth [2010] APO 5, 86 IPR 425). The second matter is an allegation of misrepresentation. While this is a ground of revocation, it is not a ground of opposition. As it is not a ground, I have no power to dismiss it. However, I can see no good reason why it should be included in the Statement.
Conclusion
I will dismiss the following grounds: entitlement, fully describe the invention, defining the invention. As the opposition has not been dismissed, it is appropriate for the time for serving evidence in support to run from the date of this decision. I will direct that the opponent has three (3) months from the date of this decision to serve evidence in support.
Costs
In matters before the Commissioner, it is normal for costs to follow the event. While the applicant has made out a case in relation to some of the grounds of opposition, I have found that the majority of grounds can stand. The degree of success achieved by the opponent indicates it would be inappropriate to reward them with an award of costs. I have carefully considered whether it would reasonable to reverse the award of costs, but on balance I believe that there should be no award of costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents