Quickcut Pre Press Network Pty Limited v EWT Trade and Business Consultants NZ Limited
[2006] APO 11
•24 March 2006
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 758954 in the name of EWT Trade and Business Consultants NZ Limited
Title :Placing Advertisements in Publications
Action :Opposition under s. 59 of the Patents Act 1990 by Quickcut Pre Press Network Pty Limited (Opponent 3); objection to a request to serve further evidence, objection to a request to amend the statement of grounds and particulars, and a request for a direction that certain parts of the evidence in reply are inadmissible by EWT Trade and Business Consultants NZ Limited
Decision: Issued 24 March 2006.
Abstract
The evidence consists of three statutory declarations, two of which had originally been filed as evidence in reply. The opponent sought to adduce this as further evidence as a precautionary measure, even though they believed the evidence to be strictly in reply.
It was found that it was not appropriate in the present proceedings to conclude whether the evidence initially tendered as evidence in reply should properly be considered as evidence in reply, and that this should be determined as part of the substantive opposition. In light of that, and having regard to the criteria set out in Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co (1994) 29 IPR 285 for allowing further evidence to be adduced, it was held that the application to file further evidence should be granted in part.
Leave was granted to admit the O’Hanlon declaration, and partially admit the Massey No. 1 declaration, as these were potentially of significance to the substantive opposition. The Massey No. 2 declaration would not appear likely to play a significant role in the substantive opposition proceedings and leave was refused.
Amendment to the statement of grounds and particulars was allowed.
The applicant was allowed one month from the date of issue of this decision to file evidence in response to the further evidence.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 758954 by EWT Trade and Business Consultants NZ Limited; Opposition under s. 59 of the Patents Act 1990 by Quickcut Pre Press Network Pty Limited (Opponent 3); objection to a request to serve further evidence, objection to a request to amend the statement of grounds and particulars, and a request for a direction that certain parts of the evidence in reply are inadmissible by EWT Trade and Business Consultants NZ Limited
BACKGROUND
EWT Trade and Business Consultants NZ Limited (“EWT”) filed patent application 758954 (19761/01) on 6 December 2000 through the provisions of the Patent Co-operation Treaty. The application claims priority from two NZ patent applications, the earliest of which was filed on 6 December 1999. Following examination, the application was advertised as accepted on 3 April 2003.
Twenty parties filed notices of opposition. Subsequently, one opposition was dismissed for failure to serve a statement of grounds and particulars and eleven oppositions were withdrawn. Quickcut Pre Press Network Pty Limited (“Quickcut”) is one of the eight remaining opponents. Their notice of opposition was filed on 25 June 2003 and their statement under regulation 5.4 of the Patent Regulations was served on 23 September 2003.
Quickcut declined to serve any evidence in support by the due date of 3 January 2004. On 27 August 2004 a delegate of the Commissioner issued a direction that “the period for the applicant to serve evidence in answer will commence from the last date in which evidence in support is completed on all oppositions”. Following an unopposed extension of time, EWT completed service of its evidence in answer on 7 June 2005.
On 1 September 2005 the opponent filed a first extension of time until 7 December 2005 in which to serve evidence in reply. This extension went unopposed, and statutory declarations by Mr Grant Patrick Schuetrumpf, Mr Paul Massey (“Massey No. 1”) and Mr Peter O’Hanlon were served on 7 December 2005. Accompanying this evidence was a further application for an extension of time until 7 March 2006 within which to serve evidence in reply.
On 21 December 2005 EWT notified the Commissioner that it objected to the extension of time. EWT also argued that the “vast majority” of the opponent’s evidence in reply was not strictly in reply, and requested that the Commissioner issue a direction that the evidence should be disregarded in the opposition proceedings. In a letter dated 3 January 2006, the delegate informed EWT that they had not sufficiently established a basis for the evidence in reply to be disregarded, and that the Commissioner did not intend to issue the requested direction at that time. Quickcut was also informed that any material that was not strictly in reply to the evidence in answer was expected to be submitted as further evidence, together with an amendment to the statement of grounds and particulars.
Consequently, Quickcut withdrew their request for an extension of time in which to serve evidence in reply, and on 17 January 2006 filed an application to serve further evidence comprising the O’Hanlon and Massey No. 1 declarations which had been served as evidence in reply, as well as a second statutory declaration by Mr Massey dated 16 January 2006 (“Massey No. 2”). The applicant objected to service of this further evidence on 3 February 2006.
The applicant's opposition to the request to file further evidence was heard in Canberra on 22 February 2006. Mr John Gibbs, patent attorney of Phillips Ormonde & Fitzpatrick represented the applicant. Mr Paul Massey, patent attorney of Spruson & Ferguson, advised that the opponent did not intend to appear at the hearing and would instead rely on the written submissions dated 20 February 2006.
SPECIFICATION
The specification is entitled "Placing Advertisements in Publications”, and relates to an Internet-based method of placing display advertisements in publications. An Internet site which can be accessed by users who wish to place an advertisement is provided by a facilitator. The user selects the publications in which the advertisement is to appear, along with size and placement details. After choosing a template which is of a size suitable for placement in the selected publication, the user enters details for the advertisement into the template. The advertisement is then forwarded by the facilitator either directly or via an intermediary to the selected publication together with appropriate instructions.
The specification ends with 11 claims. Claim 1, the only independent claim, reads as follows:
1. An Internet-based method of placing display advertisements in publications, including the following steps:
(a)a facilitator provides an Internet site which can be accessed by advertisers who wish to insert advertisements in publications;
(b) two or more advertisement templates of differing sizes are defined for an advertiser, each advertisement template having a style and appearance approved by or on behalf of the advertiser;
(c) when desiring to place an advertisement in a publication, the advertiser accesses the Internet site and selects a publication in which the advertisement is to appear together with size and placement details;
(d) the advertiser selects one of the templates which is of a size suitable for placement in the selected publication, and enters details of the advertisement into the template; and
(e) the advertisement is then forwarded by the facilitator either directly or via an intermediary to the selected publication together with instructions indicating the advertiser's selections.
FURTHER EVIDENCE
10. The application to adduce further evidence states that the nature of the further evidence and the grounds for making the application are:
1. Statutory Declaration by Paul Douglas Massey, dated 16 January 2006, with Exhibits PDM-1 and PDM-2 as enclosed with our letter of 17 January, 2006. This Statutory Declaration is made in relation to an email that I received from Brian Anderson of Adlizard Research Pty Limited in relation to the Adlizard Functional Specification. This email sets out the position of Adlizard in regard to the subject matter of the Application No. 758954. It is only recently that I realised the significance of the email to the Opposition.
2. Statutory Declaration by Paul Douglas Massey, dated 6 December 2005, with Exhibits PDM-1 to PDM-6. This Statutory Declaration was filed in order to place in the evidence the additional prior art found in the course of preparing the Evidence in the Opposition.
3. Statutory Declaration by Peter O'Hanlon dated 11 November 2005, with Exhibits POH‑1 and POH‑2, as filed with our letter of 7 December, 2005. This Statutory Declaration sets out the common general knowledge as known to Peter O'Hanlon who was a person skilled in the art at the priority date. It was necessary for Peter to establish his common general knowledge before commenting on the Evidence-in-Answer.”
THE RELEVANT LAW
11. Regulation 5.9 relates to amendment of the statement of grounds and particulars, and relevantly states:
Amendment of statement
(1) Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
(a) if the Commissioner reasonably believes that an amendment of a statement referred to in regulation 5.4 corrects an error or omission by the opponent or by his or her agent — may amend the grounds of opposition set out in the statement; or
(b) …
(c) must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4.
(2) The Commissioner must not allow an amendment requested under subregulation (1), if:
…
(d) he or she does not reasonably believe that the applicant has been notified of the proposed amendment.
(e) [repealed]
(3)The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.
(4)If the Commissioner allows an amendment, he or she must give the applicant a copy of the statement as amended.
12. Under regulation 5.9(1)(c), on the written request of an opponent, the Commissioner must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4. I note that the regulations were amended on 29 November 2000 to remove the requirement in subregulation 5.9(2)(e) that an amendment is not allowable if the Commissioner reasonably believes a person will be unduly prejudiced by the amendment. Therefore, in relation to the requested amendments, the hearing was limited to whether the Commissioner should specify any terms.
13. Further evidence, and directions by the Commissioner in the case of oppositions under section 59 of the Patents Act 1990 are governed by regulation 5.10. In particular, subregulations 5.10(4) and 5.10(5) relevantly state:
“(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party – is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion – ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.”
14. Regulation 5.10 lays down the general requirement that, before granting the application or giving a direction, I must be reasonably satisfied that it is appropriate in all the circumstances.
15. The Federal Court has considered the requirements of regulation 5.10 in Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents and other (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents 50 IPR 398. Although Ferocem, Goninan, and National Starch all related to requests under regulation 5.10(2) for extensions of time, a number of Patent Office decisions have considered the principles set out in these decisions to be generally applicable to regulation 5.10. For example, see Nalco Chemical Company v W.R. Grace & Co.-Conn [1998] APO 65 (23 November 1998) in relation to regulation 5.10(4), and Alvern Norway A/S v Trans Global Concepts Pty Ltd 38 IPR 158 in relation to regulation 5.10(1).
16. Burchett J set out some general guidance on the factors to be considered under regulation 5.10(5) in Ferocem at 247-248:
"The determination of an application for an extension of time under reg. 5. 10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 at 143, ' the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than it should be shut out in consequence of a failure of procedure, lamentable though the failure may be'. …"
17. These considerations were referred to in Goninan, where Sackville J adopted the position that the decision-maker was required to give proper, realistic and genuine consideration to the public interest generally and specifically to the opposition proceeding being determined on its merits. In respect of this point, he stated:
"In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on its merits."
18. The authorities also emphasise that an administrative decision-maker is entitled to act on any material which is logically probative (Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666), and thus the Commissioner is not as a matter of law compelled to exclude evidence which is not properly in reply. This is certainly the approach advocated in Snap-On Technologies Inc v BeissbarthGmbH [2000] APO 52:
… I am concerned that long debates at the substantive hearing about whether evidence is admissible could detract from the substantive issues, and I believe it would be more administratively efficient if both parties come to the substantive opposition with all material. From the decision in RGC v Wimmera[1999] APO 79 (16 December 1999) I note that the Commissioner has an inquisitorial role in an opposition. While she must allow the parties natural justice to reply to evidence, she is not bound by the rules of evidence. Reflective of this, the Commissioner even has the power under regulation 5.11 to consider documents in an opposition that are not part of the evidence. In my view, the key question to consider is "how relevant is this material?" rather than "is it strictly in reply?"
19. Similar reasoning was applied in Sonus Pharmaceuticals, Inc v Alliance Pharmaceutical Corp and Schering Aktiengesellschaft [2001] APO 13 (16 March 2001). These decisions suggest that ultimately it is the relevance and significance of the evidence, rather than the stage it was filed during the opposition proceedings, that is an important consideration. Even if evidence is not strictly in reply, an administrative decision-maker must take into account the competing considerations of the public interest, the interests of the parties, and the nature and significance of the evidence.
20. While both Ferocem and Goninan deal with extensions of time for filing evidence, the general principles flowing from them are equally applicable to the filing of further evidence. Also as noted by the delegate in Nalco Chemical Company v W.R. Grace and Co.-Conn. [1998] APO 65 application of the principles of Goninan requires a balancing exercise in which all competing considerations must be taken into account.
21. Consequently, in my decision I will discuss these principles under the following broad headings:
· Nature and significance of the evidence;
· Reasons for the delay; and
· Interests of the parties.
SUBMISSIONS
22. Both parties provided written submissions, and I will refer to these where appropriate in the body of my decision.
DISCUSSION
Statement of Grounds and Particulars:
23. The amendments to the statement of grounds and particulars introduce new particulars (i) to (j1) under the ground of novelty and inventive step. I note that many of the particulars sought to be included by Quickcut relate to particulars included in the seven other current oppositions. I consider that particulars (l) to (n), (q), (s), (u) to (x), (b1), (c1) and (e1) to (i1) fall into this category. Any argument by EWT that inclusion of these particulars would adversely impact on the applicant seems disingenuous when they have clearly been aware of the existence of these documents for several years.
24. The documents relating to particulars (i), (j) and (k) have been filed as further evidence. However, the documents relating to particulars (o), (p), (r), (t), (a1) and (j1) have not been placed into evidence by Quickcut or any other opponent. I also note that particular (q) is identical to particular (d1), and that the date of publication for particular (h1) is incomplete.
25. The applicant has objected to the amendments and asked that I impose as a term of the amendment that the opponent not be allowed to rely upon any document not in evidence. The applicant's reasons for this request are the late stage of opposition proceedings at which the amendments were requested and the further costs associated with consideration of these documents.
26. Under regulation 5.9(1) the Commissioner must amend the particulars, despite any inadequacies or reference to any material that is not in evidence. I therefore consider it appropriate to allow the amendments to the statement of grounds and particulars, while noting that the Commissioner is not required to consider at the substantive opposition any document not in evidence.
The Schuetrumpf declaration:
27. The applicant has asked for a direction to the effect that the evidence in the Schuetrumpf declaration is inadmissible because it is not strictly in reply. I note that the majority of the Mr Schuetrumpf’s declaration relates to his understanding of the common general knowledge in relation to the placement of advertisements, and challenges the alternative view of the common general knowledge advanced by the evidence in answer. The remainder of Mr Schuetrumpf’s declaration is directed to an analysis of the novelty and inventive step of claims 1 to 11.
28. In Mr Gibb’s view, this analysis is more appropriately considered as evidence in support, and can hardly be characterised as properly responding to the evidence in answer. I am not convinced by this argument, as Mr Schuetrumpf’s analysis appears to address issues explicitly raised in the evidence in answer by Mr Tidmarsh, Mr Simpson and Mr Smith regarding the Sparks and Kargman patents.
29. In my view the declaration by Mr Schuetrumpf may be considered properly in reply, and so logically is prima facie relevant to a determination of the opposition (assuming the evidence it refutes is relevant). To issue the requested direction would clearly be inappropriate in these circumstances.
30. Even if the Schuetrumpf declaration was not considered to be strictly in reply, the decisions in Snap-On (supra) and Sonus (supra) suggest that the relevance and significance of the evidence are important factors which must be taken into account. The evidence in the Schuetrumpf declaration is prima facie highly relevant to the issues to be determined in the substantive opposition. It is therefore in the public interest for the evidence to be before the delegate at the substantive hearing.
31. Accordingly, my findings on the relevance of the evidence do not support the applicant's request for directions striking out the evidence. In my view, a more appropriate way of proceeding would be to provide the applicant an opportunity to serve evidence responding to any new matter should this be required.
The Further Evidence
32. The request for leave to serve further evidence is rather unusual in that the Massey No. 1 and O’Hanlon declarations were properly served in time as evidence in reply, and it is only Mr Massey’s second declaration that was actually filed after completion of the usual evidentiary stages of an opposition. Mr Massey submitted that this action was taken as a precautionary measure, even though the opponent believed the evidence to be strictly in reply. Accordingly, by virtue of their application to serve further evidence, Quickcut have indicated that they wish the Massey No. 1 and O’Hanlon declarations to be considered as “further” evidence.
33. In assessing the admissibility of this further evidence, the first point I will consider relates to the nature and significance of the evidence. The approach adopted by the court in Goninan (supra) suggests that what is required is that the material sought to be adduced is arguably relevant to the correct determination of the opposition. This was the approach adopted in Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co (1994) 29 IPR 285, which was concerned with a request to serve further evidence where the evidence had already been filed. The delegate stated at 292 that:
"The present action is not the substantive opposition hearing. To attempt to determine in any absolute sense the importance of the applicant's further evidence would be to pre-empt, without the benefit of full argument, the decision in the substantive opposition hearing."
34. As a preliminary point I note that it is not a prerequisite of a request for leave to serve further evidence that the evidence has already been served. However, in the present case the evidence has already been served, and I have therefore been able to consider it directly although not in depth.
The O’Hanlon declaration:
35. The statutory declaration by Mr O’Hanlon is directed to establishing the common general knowledge before the priority date of the patent, and challenges the alternative view of the common general knowledge advanced by the evidence in answer. This material is clearly relevant to a balanced consideration of inventiveness, and is therefore potentially critical to a hearing of the opposition on its merits. Establishing the common general knowledge in opposition proceedings was discussed in Nalco Chemical Company v W.R. Grace and Co. -Conn. [1998] APO 65 (23 November 1998). I find the delegate's comments at page 10 particularly apposite:
"These statements are made in the context of arguments about inventive step which depend on evidence of what is the common general knowledge of an ordinary worker in the art in Australia. Statements about common general knowledge made by one individual are very liable to a criticism that they are unrepresentative. In this context statements from other independent declarants, ie. statements which corroborate those of another witness, as argued by the applicant, are likely to have an important bearing on the outcome of the case. I do not believe it is necessary for me to go beyond this and to consider directly the applicant's other evidence. Stephenson's statements go to the important issue of inventive step and are likely to have an important bearing on the outcome of the case whether they stand alone or whether they provide corroboration of the evidence on common general knowledge of another witness."
36. I believe that a similar argument applies in this instance, and that evidence as to the common general knowledge is likely to have a significant bearing on this case particularly where inventive step is concerned.
37. The applicant’s concern that the O’Hanlon declaration was “embarrassingly irrelevant” because there was no reference to the patent specification or claims appears to be misguided. Even though reference to specific parts of the specification or claims may prove useful, I do not believe that a general discussion of the common general knowledge requires this precision. In any case, I accept the position put forward by Mr Massey that the O’Hanlon declaration is potentially significant, as it constitutes evidence from one of the foremost Australian experts in relation to placing advertisements in printed publications. I also note that Mr O’Hanlon appears to be a person at “arms-length” to all of the parties currently involved in the opposition, and thus his evidence may be considered to be that of an independent expert.
38. In summary, I consider that the O’Hanlon declaration is prima facie pertinent to the question of whether the claimed invention is novel and inventive.
The Massey No. 1 declaration:
39. Mr Massey’s first declaration merely refers to six patent documents, all of which are exhibited to his declaration. Mr Gibbs noted that four of these patent documents were published well after the priority date, and argued that for this reason they were of limited relevance. The relevant details are as follows:
Document No. Applicant Publication Date WO 2001/016801 Kargman 8 March 2001 US 5864823 Levitan 26 January 1999 US 6253188 Witek et al. 26 June 2001 US 2002/0178093 Dean et al. 28 November 2002 WO 1998/008176 Moore Business Forms, Inc. 26 February 1998 US 6073105 Sutcliffe et al. 6 June 2000
40. According to Quickcut, these four documents (Kargman, Witek et al., Dean et al. and Sutcliffe et al.) would be relevant if the earliest priority date of the application was called into question.
However, I note that three of these documents (Kargman, Witek et al. and Dean et al.) are also published after the filing date of 6 December 2000. Any arguments that the claims of the accepted specification are not entitled to the filing date are in my view without merit, as no amendments to the specification occurred during the course of examination. It follows that if no amendments were proposed and allowed between filing of the complete specification (or more correctly, entry into the national phase in this instance) and acceptance, then any concern about the priority date of the claims being beyond 6 December 2000 is moot. As an aside, I note that Kargman already forms part of the evidence in support of both the Trading Post Group Pty Limited (opponent 14) and John Fairfax Holdings Limited (opponent16). Nevertheless, I am unable to see how Kargman, Witek and Dean could have any influence on the case.
42. US Patent No. 5864823 by Levitan discloses a system for distributing commercials and other advertising information to interested recipients only. The specification describes the use of on‑line forms based on supply data models which differ for various types of trade. For example, a real estate form prompts for such information as kind of property, location, price and so on.
43. International Publication WO 1998/008176 by Moore Business Forms, Inc discloses a method of creating and proofing customized printed material before printing on a production printing system. A user may connect with an internet web site provided by a commercial printing service and select from a plurality of available templates for the printed material.
44. US Patent No. 6073105 by Sutcliffe et al. discloses a system for providing personal advertisements over a public network and for matching personal advertisements of different users includes means for integrating data from a plurality of different storage devices into a single database accessible by a user over a public network. The database includes client and user profile information collected from users over the public network and through one or more call centres and advertisement taking systems.
45. In my view all three of these documents are prima facie relevant.
The Massey No. 2 declaration:
46. Mr Massey’s second declaration is accompanied by two exhibits. Exhibit PDM-1 is a copy of a first email from Mr Brian Anderson of Lizard Research Pty Ltd to Mr Massey, dated 8 August 2003. Exhibit PDM-2 is a copy of a second email, originally sent by Mr Brian Anderson to Mr Kieran Power of Griffith Hack, Sydney. The second email was accompanied by an electronic copy of the AdLizard Functional Specification.
47. Mr Gibbs argued that the declaration did not materially assist the opponent’s case, as the AdLizard document was already in evidence. I note that in his declaration, Mr Massey states that “…the content of the AdLizard Functional Specification of PDM-2 is identical in content to the AdLizard Functional Specification of annexure GHM 6 of Geoffrey Hugh McCarthy’s Declaration…”. I agree with the applicant that another copy of material previously filed adds nothing to the case.
48. It was also submitted by Mr Gibbs that Mr Anderson’s second email was little more than hearsay, and that this evidence should have been provided in declaratory form. Though this is highly desirable, it is clear from the decision in T.A. Miller Ltd v the Minister for Housing and Local Government and Another (1968) 1 WLR 992 that the Commissioner is entitled to act on "hearsay" evidence that would not be admissible in court. In my view the Massey No. 2 declaration with the Anderson email exhibited is "evidence" of what Mr Anderson stated in his email to Griffith Hack. Though Mr Gibbs believes this to be "hearsay" evidence I am satisfied that it meets the requirements of regulation 22.12. The issue then is not whether it is admissible but how much weight the "hearsay" evidence should be given in the proceedings. It is the relevance of the evidence, rather than its format, which is of significance.
49. The email from Mr Anderson states that the AdLizard Functional Specification “…was in circulation since July 1998…”, and I believe this information could assist in establishing the date of publication of this document. I can certainly see the merit in taking measures to avoid arguments at the substantive hearing regarding the publication date of supporting documents. However, I believe that there is sufficient evidence already filed which clearly establishes when the AdLizard Functional Specification was published. The Anderson email adds nothing new to the case.
50. I am therefore willing to accept Mr Gibbs’ contention that the Massey No. 2 declaration, while clearly relevant, does not provide any new evidence that is likely to have any real impact on the hearing or that is likely to contribute to a more just or correct decision. In saying this, my expectation is that there would be no disagreement at the substantive hearing regarding the publication date of the AdLizard Functional Specification. Should the applicant question the publication data of the AdLizard Functional Specification at the substantive opposition, it is highly likely that Massey No. 2 would be admitted if required.
Reasons for the delay
51. Mr Massey argued that as the O’Hanlon and Massey No. 1 declarations were intended to be evidence in reply, by their very nature they could not have been served until after EWT had served its evidence in answer. Though I accept this reasoning with regard to the O’Hanlon declaration, I do not believe it extends to Massey No. 1. As Mr Gibbs stated, the opponent has failed to provide a proper explanation regarding their lack of diligence in obtaining evidence which was more in the nature of evidence in support than evidence in reply.
52. Furthermore, it was noted by Mr Gibbs that two of the six patent documents had been particularised in the statement of grounds and particulars filed three years ago, and it was not clear why these were not filed as evidence in support. As far as I am aware, there was no practical reason why this evidence could not have been prepared and served. This suggests that the opponent has been exceedingly dilatory in the gathering of their evidence, and I share the applicant's concern regarding the approach adopted by Quickcut.
53. With regard to Massey No. 2, the opponent submitted that “…It was only in late December 2005 after completing the review of the Evidence in Support filed by the other Opponents (not available to Quickcut until September 2005)…that Spruson & Ferguson realised the significance…”. Mr Gibbs contended that this clearly demonstrated a lack of diligence, as evidence in support was completed on 6 December 2004, and could have been obtained at this time. In the applicant’s opinion, this was a significant factor which should be taken into account in refusing the application to serve further. Though I agree with EWT that the evidence from the other opponents could have been obtained much earlier than September 2005, I do not believe this alone provides sufficient justification for refusing leave to serve further evidence.
54. It is unclear why the significance of this evidence was not appreciated by Spruson & Ferguson when it was obtained on 8 August 2003. According to Mr Massey, Spruson & Ferguson did not see a need to place the comments made in the email into evidence at that time as it was assumed that Lizard Research Pty Ltd (opponent 15) would file this material, thus obviating the need for Quickcut to do so. However, Lizard Research withdrew their opposition on 8 October 2003 without the service of any evidence in support.
55. In my view the assumption that Lizard Research would file this material represents a significant error in judgement. It would seem that the opponent’s desire to minimise their costs has prevailed over any concern regarding the actual progress of the evidentiary stages. As Mr Gibbs observed, any serious opponent should be pursuing the service of evidence expeditiously, and not seek to rely on the conduct of other opponents. I would also add that the Commissioner has an expectation that all parties to an opposition proceeding will prepare their evidence in a timely manner and allocate sufficient resources to ensure that this is done. I am not satisfied that Quickcut have done so in regard to the Massey declarations.
56. On balance, I do not believe that the opponent has provided any convincing explanation for filing the Massey declarations at this late stage in the opposition proceedings. Much of the information in the Massey declarations has been available for a significant period of time and it certainly does not represent highly relevant new data that has only recently come to light. To file material as further evidence when there was no impediment to filing that same material as evidence in support does not demonstrate a satisfactory level of diligence. The piecemeal filing of evidence is unnecessary, administratively inconvenient and detracts from the important issues to be decided at the substantive opposition. At its worst, it could be seen as an abuse of process. However, seeking to file this material as further evidence appears to be the type of "lamentable" mistake referred to in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 at 143 which would not invalidate the request.
Interests of the parties
57. The interests of the relevant parties are a consideration that must be taken into account in exercising the discretion to allow further evidence. Mr Gibbs reiterated that Quickcut had not displayed due diligence so far, and that any extension, if granted, would unnecessarily protract the proceedings. Mr Gibbs also said that any prejudice to Quickcut by not having the request to serve further evidence granted essentially derives as a consequence of their own actions or lack thereof.
58. Whilst this submission has some merit it does not preclude me from considering other relevant factors, such as the prejudice to the opponent, and the public interest. Indeed, by Mr Gibbs’ own submissions at the hearing, I am required to consider all the circumstances relevant to the request for extension.
59. The opponent's interests principally lie in having any material relevant to its case being considered at the substantive hearing into the matter. I have dealt with the relevance of the material in some detail already. The O’Hanlon and Schuetrumpf declarations are prima facie relevant to the opposition because both assist in establishing the common general knowledge. Given the importance of this issue in the opposition proceedings it is highly likely that both the opponent and the public would be significantly disadvantaged if the further evidence was not admitted and the case was not heard on its merits. I have also found that Massey No. 1 is likely to be relevant in so far as US 5864823 (Levitan), WO 1998/008176 (Moore Business Forms, Inc) and US 6073105 (Sutcliffe et al.) are concerned. However, in my view Massey No. 2 would not appear likely to play a significant role in the substantive opposition proceedings.
60. In support of their application, Mr Massey noted that evidence in reply had not been completed in three of the other oppositions. As the further evidence had been served before completion of the evidentiary stages in these three oppositions, it was said that there would be no effect on the efficient and orderly administration of the opposition.
61. This argument, though superficially appealing, pays insufficient regard to the denial of natural justice that would occur if the applicant was not given an opportunity to respond to Quickcut’s further evidence. Allowing EWT a period of time in which to file responsive evidence would clearly result in protraction of the opposition proceedings. Nevertheless, it would allow for the remainder of the evidence to be filed in an orderly and efficient manner and protect the interests of the parties in having all significant matter relevant to their respective cases available for consideration at the substantive hearing. The resulting protraction could not be considered to be an unnecessary protraction.
62. On balance, I think the interests of the opponent in having the opportunity to present relevant evidence that would allow the opposition to be decided on its merits outweigh the interests of the applicant in these circumstances. Though I am mindful of the applicant’s submission that I should give due consideration to the undue delay of the opposition proceedings, this is just one consideration and is not in my opinion the overriding one in the present case.
DECISION
63. I consider that the evidence from O’Hanlon and Schuetrumpf originally filed in reply is prima facie properly evidence in reply. Even if the Schuetrumpf declaration could be shown to be not strictly in reply, the circumstances do not support a direction that the evidence be inadmissible. Some of the issues addressed in the evidence appear to be fundamental to the determination of the opposition. The public interest in considering the opposition on its merits and the interests of the parties in having all significant matter relevant to their respective cases available at the substantive hearing weighs heavily in the circumstances under consideration.
64. I do not believe that a reasonable explanation has been provided for the delay in filing the Massey declarations. However, this does not automatically lead to refusal, as the relevance of the material to be filed is an important consideration. I have found that the Massey No. 1 declaration is of limited relevance, with only US 5864823 (Levitan), WO 1998/008176 (Moore Business Forms, Inc) and US 6073105 (Sutcliffe et al.) likely to be of any significance. The Massey No. 2 declaration would not appear likely to play a significant role in the substantive opposition proceedings.
65. Accordingly, I permit the opponent to serve the O’Hanlon declaration and part of Massey No. 1 (limited to exhibits PDM-2, PDM-5and PDM-6) as further evidence on the applicant. The Schuetrumpf declaration has already been served as evidence in reply. Mr Gibbs submitted that in view of the extensive nature of the evidence, a period of three months to respond would be necessary. Quickcut stated that it had no objection to the further evidence being accepted on the basis that EWT, if it wishes, may have further time to file any evidence in response to the further evidence. However, I note that the opponent has been only partially successful in their request, and the applicant has been aware of this material since 7 December 2006. Given the applicant’s desire for the substantive opposition to be held as soon as practicable, I believe that a period of one month from the date of this decision is sufficient to file any evidence in response. This can always be extended under regulation 5.10(2) if the applicant is able to establish that such a request is appropriate in all of the circumstances.
66. With regard to the statement of grounds and particulars, I allow the amendment, but note that the Commissioner is not required to consider at the substantive opposition any document not in evidence.
COSTS
67. Both parties, irrespective of whether the extension was granted or denied, argued that costs should be awarded in their favour. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations.
68. In the present case Quickcut has partially succeeded in their request to serve further evidence. However, their success was based on material presented at the hearing. Because that information was not provided earlier in declaratory form, the applicant was not afforded an opportunity to reconsider whether or not it should maintain its objection to the request to serve further evidence.
In these circumstances, I consider it appropriate that I award costs against Quickcut.
R. W. J. Finzi
Delegate of the Commissioner of Patents
24 March 2006
Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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