SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited
[2015] APO 1
•19 January 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited
[2015] APO 1
Patent Application: 2004203785
Title:Treatment of aqueous suspensions
Patent Applicant: Ciba Speciality Chemicals Water Treatments Limited
Opponent: SNF (Australia) Pty Ltd
Hearing Officer: P M Spann, Deputy Commissioner of Patents
Decision Date: 19 January 2015
Hearing Date: Written submissions completed 14 November 2014
Catchwords: PATENTS – request for stay – request for extension of time to file evidence in answer – reg 5.9 – request for further and better particulars – request for leave to file further evidence – stay not granted – extension of time granted to 24 September 2014 – direction that further amended statement of grounds and particulars be filed – no award of costs.
Representation: Patent applicant:
Mr D Shavin QC
Mr P Creighton-Selvey, Counsel
Gilbert + Tobin, Solicitors
Opponent:
Mr B Caine QC
Mr B Fitzpatrick, Counsel
K&L Gates, Solicitors
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004203785
Title:Treatment of aqueous suspensions
Patent Applicant: Ciba Speciality Chemicals Water Treatments Limited
Opponent: SNF (Australia) Pty Ltd
Date of Decision: 19 January 2015
DECISION
I grant an extension of time to file evidence in answer until 24 September 2014.
I direct that:
-The period for filing evidence in reply commences on the date of this decision
-The Opponent has 14 days from the date of this decision to file its proposed further amended statement of grounds and particulars.
REASONS FOR DECISION
This matter concerns requests in relation to the opposition to patent application 2004203785 for a stay of proceedings, for further and better particulars, for an extension of time to file evidence in answer and for leave to file further evidence.
Background
The application was filed by Ciba Speciality Chemicals Water Treatments Limited (Ciba) on 7 January 2004. It was examined and advertised as accepted on 5 July 2007 and a notice of opposition to the grant of a patent was filed in the name of SNF (Australia) Pty Ltd (SNF) on 5 October 2007. A statement of grounds and particulars was served and filed on 7 January 2008.
Several divisional applications were filed in relation to the present application and granted as innovation patents. Revocation and infringements proceedings were commenced in the Federal Court in relation to the innovation patents and consequently, at the request of SNF, the opposition was stayed pending resolution of those proceedings[1].
[1] SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited [2011] FCA 452Following the refusal of special leave to appeal to the High Court, the opposition recommenced and evidence in support was completed on 14 March 2014 (with confidential exhibits provided to Ciba on 24 March). On 16 April 2014 SNF filed an interlocutory application in the Federal Court seeking to have orders made by the Court declaring the innovation patents valid set aside. This was on the basis of it asserting secret use and a lack of novelty on the basis of information that has subsequently come to light. The interlocutory application is scheduled to be heard by Justice Davies from 27 January to 3 February 2015.
Ciba’s evidence in answer was due to be filed on 24 June 2014. On 20 June 2014 it requested an extension of time of three months and then on 25 July requested a suspension of the opposition due to the co-pending court proceedings. A delegate of the Commissioner on 18 August 2014 requested further information in support of both requests and subsequently on 2 September indicated intent, subject to a right to be heard, to refuse the extension of time request but to grant a stay of proceedings to 6 February 2015.
A request for further and better particulars in relation to the opposition was filed on 9 September 2014. The Commissioner subsequently invited the parties to be heard on all three matters by written submissions. Ciba filed several declarations on 23 and 24 September and in its submissions in chief has clarified its requests in a number of alternative positions:
· Primary position - a stay be granted to at least 6 February 2015, that after the stay is lifted SNF file further and better particulars and then Ciba have 3 months to file any further evidence in answer.
· Secondary position - if a stay is not granted it requests that further and better particulars be required immediately and an extension of time be granted to 6 March 2015 due to exceptional circumstances.
· Third position - further and better particulars be required immediately and then it have 3 months from the filing of further and better particulars to file any further evidence in answer.
· Forth position - an extension of time be granted to 24 September 2014 on the basis of exceptional circumstances or alternatively that Ciba has acted promptly and diligently in preparing its evidence.
· Final position - in the event that a stay or extension of time is not granted, that it have leave to rely on the evidence filed as further evidence.
From SNF’s submissions in answer it is apparent that:
· SNF is concerned that the opposition proceed as swiftly and economically as possible.
· Does not object to evidence already filed by Ciba being admitted as evidence in answer in the opposition.
· Objects to a stay and any further opportunity for Ciba to file evidence.
· Will file a further amended statement of grounds and particulars “which will accord with the evidence SNF has filed in support of the Opposition.
On this basis Ciba in its reply submissions took the postion that the Commissioner should grant an extension to 24 September 2014 to allow it to rely on the evidence already filed or alternatively to allow the evidence to be filed as further evidence. It also sought directions concerning the filing of SNF’s anticipated further amended statement of grounds and particulars.
Consideration
As will be apparent the present opposition was filed before the commencement of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) but is subject to certain provisions of the amended legislation by virtue of the application provisions in subregulation 23.26. This includes that regulation 5.9, as amended, applies to a request to extend the time for filing evidence in answer.
It was not SNF’s submission that the Commissioner does not have the power to order a stay however it considers that applying the decision of Justice Finckelstein in Cadbury UK Limited v Registrar of Trade Marks [2008] FCA 1126 a stay should not be granted. In that decision a decision to stay an opposition until resolution of related Federal Court proceedings was overturned because of at least two reasons:
“The first is that to delay opposition proceedings for an indeterminate period, a period that could stretch out to three, four or even more years, amounts to a refusal by the delegate to hear those proceedings. The second reason is that the delegate was asked (and appears to have been prepared) to give too much significance to findings of fact made by the Federal Court.”
Finckelstein J however did not preclude the staying of opposition proceedings further stating that:
“[21] Sometimes there will be circumstances in which it is appropriate to delay opposition proceedings and await a court’s resolution of disputed facts that may be relevant in opposition proceedings. It is not possible to say with any precision what those circumstances might be. They would include (a) the degree of similarity of the issues involved, (b) the significance of the issues to the opposition proceeding, (c) whether the Registrar has more evidence than the trial judge, (d) the likelihood of the judge’s findings being challenged, and (e) whether it may be unfair (ie a breach of the rules of natural justice) to rely on the judge’s findings or the evidence on which those findings were based. In particular cases other matters will be taken into account.”
The facts in the present case are quite different to those applying in Cadbury including that the matters before the Court are potentially much more relevant to the outcome of the opposition than in that case. However if SNF is successful in its interlocutory application it will likely be a very significant period of time before a final judicial determination of issues of validity which would be relevant to but not wholly resolve the opposition.
Recognising this and in an attempt to avoid an ‘indefinite’ suspension the delegate proposed a stay to 6 February 2014 which nevertheless was based on the potential relevance of the findings of the Court. I do not consider a stay of this type is appropriate in the present circumstances at the very least because, if at all, a relevant finding of the Court will only be made if the interlocutory application is successful and a conclusion on validity made in subsequent proceedings at a distant and indefinite point in time. Rather had I been minded to order a stay it would have been on the basis of the parties’ apparent difficulty in the time following the filing of the interlocutory application to focus sensibly and efficiently on the opposition while a serious matter is being pursued in the Court involving the same legal representatives and technical experts.
However, the passage of time has made the question of a stay largely irrelevant and is not justified noting that Ciba’s evidence in answer has been filed. Consequently I refuse Ciba’s request for a stay.
As indicated above, extensions of the time for filing the evidence in answer in this case are governed by the new scheme reflected in regulation 5.9 as in force from 15 April 2013.
Subregulation 5.9(1) gives the Commissioner the power to extend the evidentiary time periods:
The Commissioner may extend an evidentiary period mentioned in regulation 5.8:
(a) if requested in writing by a party; or
(b) on the Commissioner's own initiative.
The power to extend time is discretionary, as evidenced by the use of the word "may". This power is qualified by subregulation 5.9(2), which states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i)has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii)despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so, or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
If an extension is appropriate the Commissioner must under subregulation 5.9(3) determine the length of the extended period based on what is reasonable in the circumstances.
The present opposition is no doubt complex as will be apparent from the extensive litigation history mentioned previously and the continuing proceedings before the Court concerning closely related divisional patents and grounds of alleged invalidity. The significant scope of the dispute between the parties has also impacted on how the opposition has been conducted including the extent to which procedural matters have been disputed. This includes matters related to confidential evidence and related court orders.
However, as I have decided not to grant a stay of the proceedings I do not see that there is a exceptional circumstance within the ambit of subregulation 5.9(2)(b) that would justify an extension of time on that basis. I do not agree that the extent of the opponent’s evidence, that it received multiple extensions under the former extension scheme or issues with the particularisation of SNF’s case are exceptional circumstances. Rather, to the extent that these are relevant, they can be considered in determining whether the requirements of subregulation 5.9(2)(a) have been met.
In this regard, while the delegate was not satisfied that Ciba had shown it was unable to file its evidence despite acting promptly and diligently at all times, I am prepared to accept on the basis of information now before me that the requirements of 5.9(2)(a)(i) and (ii) have been met. It is the case that despite voluminous submissions the process of evidence gathering is to some extent still unclear. Nevertheless, the information provided previously and in Ciba’s submissions does convey that reasonable attention has been given to the preparation of evidence taking into account the complexity of the opponent’s evidence in support and the co-pending court proceedings.
Having come to that conclusion, there is no reason in my view to refuse the requested extension on discretionary grounds and in determining the length of the extension under subregulation 5.9(3) I believe it reasonable in the circumstances to grant the extension until 24 September 2014. That period is reasonable given the extent of the evidence sought to be filed and the progress for completing the evidence demonstrated in Ciba’s submissions in the light of surrounding circumstances.
As indicated above SNF does not object to an extension to 24 September 2014 to cover evidence in answer already filed but objects to any further period of extension. I agree that any further extension of time would be unjustified and now does not appear to be pursued by Ciba.
SNF have foreshadowed, on 31 October 2014, the filing of a further amended statement of grounds and particulars but have delayed doing so. In the absence of that statement it appears Ciba is justifiably concerned about the case now pressed by SNF in light of the evidence in support and the filing of the further amended statement would serve to clarify the basis and future conduct of the opposition. Consequently I will direct that SNF file its proposed further amended statement of grounds and particulars within 14 days of the date of this decision. After considering the requested amendment to the statement, or in default, the Commissioner will have the opportunity to make directions for the further conduct of the opposition as are appropriate.
It remains open to Ciba to seek leave to file any further evidence in response to a further amended statement of grounds and particulars if and when filed.
Conclusion
I have determined that in the circumstances a stay is not appropriate but that the period for filing evidence in answer should be extended to 24 September 2014. It follows that the evidence in answer was completed on that date. Consequentially I will direct that the period for filing evidence in reply commences on the date of this decision.
As SNF has foreshadowed the filing of a further amended statement of grounds and particulars I will further direct the proposed amended statement be filed within 14 days of the date of this decision.
Costs
Ciba has been partially successful in the present matter. It was granted an extension of time but was not successful in obtaining a stay of the proceedings or an extension of time beyond 24 September 2014. SNF ultimately did not contest the extension of time for the period granted but I agree that had its concession been made at an early stage then the issues in dispute could have been significantly curtailed.
Consequently I make no award of costs.
P M Spann
Deputy Commissioner of Patents
SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited (No 2) [2011] FCA 656
SNF (Australia) Pty Ltd v CIBA Specialty Chemicals Water Treatments Limited [2011] FCA 794
SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited (No 3) [2011] FCA 902
SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2012] FCAFC 95
SNF (Australia) Pty Ltd v CIBA Specialty Chemicals Water Treatment Limited & Anor [2013] HCATrans 54
SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Ltd (No 4) [2013] FCA 845
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