Rio Tinto Alcan International Limited v Norsk Hydro ASA - [2014] APO 70

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rio Tinto Alcan International Limited v Norsk Hydro ASA [2014] APO 70

Patent Application: 2004281345

Title:Al-Mg-Si alloy suitable for extrusion

Patent Applicant:  Norsk Hydro ASA
Opponent:  Rio Tinto Alcan International Limited
Hearing Officer:  P M Spann, Deputy Commissioner of Patents
Decision Date:  24 October 2014
Hearing Date:  Written submissions completed 5 September 2014
Catchwords:  PATENTS – whether there are reasonable grounds for believing that evidence proposed to be filed should not be open to public inspection – reg 4.3(2)(b) – order made – inspection allowed subject to undertakings as to confidentiality.
PATENTS – extension of time to file evidence in answer – reg 5.9 – whether applicant has acted promptly and diligently at all times – extension granted

Representation: Patent applicant: Phillips Ormonde Fitzpatrick, Melbourne
Opponent:Griffith Hack, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004281345
Title:Al-Mg-Si alloy suitable for extrusion

Patent Applicant:  Norsk Hydro ASA
Opponent:  Rio Tinto Alcan International Limited
Date of Decision:  24 October 2014
DECISION
I grant an extension of the time for filing evidence in reply until 17 November 2014.
I direct that:
-Evidence in reply directed to the homogenisation procedure of Rio Tinto Alcan International Limited, when filed, is not Open to Public Inspection (OPI);
-Rio Tinto Alcan International Limited file at the same time a copy of the evidence from which the sensitive details of the homogenisation procedure including temperatures and times is redacted.
-The redacted copy is OPI.
-The non-OPI evidence be available for inspection by Norsk Hydro’s Australian legal representatives on them giving undertakings to the opponent that the information contained in the evidence will be used only in relation to the present opposition and not be disclosed to any other person.
-Norsk Hydo has leave to apply on reasonable grounds for inspection by a nominated technical expert.

REASONS FOR DECISION

This matter concerns whether there are reasonable grounds for believing that evidence proposed to be filed should not be open to public inspection and a request for an extension of time to file evidence in reply including the proposed confidential evidence. These matters are to be determined under the Patents Regulations as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
BACKGROUND
Patent application 2004281345 was filed in the name of Norsk Hydro ASA on 15 October 2004 under the provisions of the PCT. It claimed priority from a Norwegian basic application (NO 20034731) which was filed on 22 October 2003. The Australian application was advertised accepted on 22 July 2010 and a notice of opposition under section 59 was filed on 22 October 2010 by Rio Tinto Alcan International Limited (RTAI).
Evidence in support in the section 59 opposition was completed on 26 July 2011. On 22 December 2011, the applicant filed a request for leave to amend the specification under section 104. Evidence in answer was stayed under regulation 5.10(1) pending consideration of the amendment and the opposition filed by RTAI under section…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Rio Tinto Alcan International Limited v Norsk Hydro ASA

Details

AGLC: Rio Tinto Alcan International Limited v Norsk Hydro ASA [2014] APO 70
Case: [2014] APO 70
Decision Date: 24 October 2014

CaseChat Overview and Summary

The case of Rio Tinto Alcan International Limited v Norsk Hydro ASA [2014] APO 70 involved a dispute concerning patent application 2004281345 for an Al-Mg-Si alloy suitable for extrusion, filed by Norsk Hydro ASA. Rio Tinto Alcan International Limited opposed the application and, after various procedural developments, sought an extension of time to file evidence in reply and sought an order that certain evidence be not open to public inspection. The central legal issues were whether there were reasonable grounds for the proposed evidence to be not open to public inspection under regulation 4.3(2)(b) and whether an extension of time should be granted for filing evidence in reply under regulation 5.9.

The hearing officer examined the application of regulation 4.3(2)(b) and found that the Commissioner should only order a document not be open to public inspection if there are reasonable grounds to do so, with the public interest in disclosure being a significant consideration. The officer concluded that while the specific homogenisation temperatures and times were not crucial, the evidence linking the use of a common process over time was. The officer decided that the public interest in disclosure was relatively weak, and the evidence could be redacted to address this, permitting inspection of the redacted version. As for the extension of time, the officer found that Rio Tinto Alcan had acted diligently and reasonably, and no exceptional circumstances were present to warrant refusal of the extension. Consequently, an extension until 17 November 2014 was granted.

The final orders included that evidence relating to the homogenisation procedure be not open to public inspection, with a redacted version made available for inspection subject to confidentiality undertakings. The non-confidential evidence was to be filed immediately. An extension of time was granted for filing evidence in reply until 17 November 2014. Costs were awarded to neither party.

Orders