Sportingbet Australia Pty Ltd v Tabcorp International Pty Ltd - [2013] APO 41

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sportingbet Australia Pty Ltd v Tabcorp International Pty Ltd [2013] APO 41

Patent Application: 2009220019

Title:A wagering system

Patent Applicant:  Tabcorp International Pty Ltd
Opponent:  Sportingbet Australia Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  16 July 2013
Hearing Date:  written submissions dated 21 and 22 May 2013 and 4 June 2013
Catchwords:  PATENTS – hearing on the dismissal of one ground of opposition and direction for further and better particulars for another ground of opposition – one ground of opposition is dismissed – further and better particulars required for another ground of opposition – costs awarded against the Opponent

Representation: Patent applicant: Freehills Patent Attorneys, Sydney
Opponent:Peter Maxwell & Associates, Sydney

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009220019

Title:A wagering system

Patent Applicant: Tabcorp International Pty Ltd
Date of Decision: 16 July 2013
DECISION
Ground 4 of the Statement of Grounds and Particulars is dismissed. Further and better particulars are required for ground 6. The Opponent has two weeks from the date of this decision to amend the Statement of Grounds and Particulars consistent with this decision.
Costs awarded according to Schedule 8 against the Opponent, Sportingbet Australia Pty Ltd.
REASONS FOR DECISION
Background

Patent application number 2009220019 in the name of Tabcorp International Pty Ltd (hereafter referred to as the Applicant) was opposed by Sportingbet Australia Pty Ltd (hereafter referred to as the Opponent), and a statement of grounds and particulars was served on 28 February 2013. The Applicant requested dismissal of the opposition on 28 March 2013.
A Delegate considered the request for dismissal and proposed, in a letter dated 4 April 2013, to dismiss ground 4 and direct further and better particulars in relation to grounds 5 and 6.
The Opponent requested, in a letter received on 17 April 2013, a hearing on the dismissal of ground 4 and the direction for further and better particulars for ground 6.
Written submissions were made on 21 and 22 May 2013 by the Applicant and Opponent respectively. Submissions in response were made by the Applicant on 4 June 2013. On 21 June 2013 the Opponent informed the Office of how they intended to amend the Statement of Grounds and Particulars.
Law on Dismissal
Dismissal of an opposition is provided for by regulation 5.5 of the Patents Regulations as follows:
5.5 (1) An applicant may:
(a) within 1 month of being served with a copy of a statement by an opponent under paragraph 5.4(a); or
(b) if the complete specification in relation to an opposed application is re-examined under subsection 97(1) of the Act - within 1 month from the day when the re-examination is completed under regulation 9.5;
request the Commissioner in the approved form to dismiss the opposition.
(2) As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.
(3) The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.
In the present case the request for dismissal was made within one month of being served with a copy of a statement by the Opponent. The Commissioner informed the Applicant of the request on 4 April 2013. Consequently the procedural prerequisites for dismissal have been satisfied.
In Stack v Commissioner of Patents [1999] FCA 148 the Federal Court approved the use of the approach laid down in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129:
"[T]he plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his lack of a cause of action - if that be the ground on which the court is invited, as in this case, 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'."
It follows that an opposition to the grant of a patent can only be dismissed if it is clear that the opposition cannot succeed. The threshold for determining if an opposition cannot succeed is generally taken to be ‘no reasonable prospect of success’ (Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 and Wyeth v Sepracor, Inc. [2010] APO 5).
It is the established practice of the Commissioner that an opposition can be dismissed either in whole or in part (see L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v Commonwealth Industrial Gases Ltd (1991) 24 IPR 77).
The question of when an opposition cannot succeed is determined by considering the Statement of Grounds and Particulars, which briefly outlines and circumscribes the case for the opponent. The statement identifies the material facts necessary for the particular grounds of opposition (see Mobay Corporation v The Dow Chemical Company (1992) 24 IPR 379). Where the statement of grounds and particulars does not disclose an arguable ground of opposition, then it is appropriate to dismiss the opposition.
The present matter raises the issue of the relationship between dismissal and further and better particulars. As was pointed out in Mobay v Dow, supra at 394, where a material fact is specified but with insufficient detail, that may be remedied with further and better particulars. However, when a material fact is not specified at all, then it is appropriate to dismiss the ground. The focus is solely on the material facts.
Statement of Grounds and Particulars
The Particulars for grounds 4 and 6 are as follows:
“GROUND 4 - Section 59(a)(i) or (a)(ii) - The nominated person is either not entitled to a grant of patent for the invention or is entitled but only in conjunction with another person.
The applicant, Tabcorp International Pty Ltd, is not entitled to the patent or only in conjunction with another person or lacks any title derived from the inventors.”
“GROUND 6 - Section 59(b) - The alleged invention is not a patentable invention because it was secretly used in the patent area before the priority date of the claim.
The Applicant did, before the priority date, use a system to offer the Mystery6 and Footy Tip 8 wager types which falls within the scope of claims 1 to 21. To the extent the ground of secret use is established, any aspect of the system which was not public information would result in the invention being secretly used.”
The application for dismissal
The application for dismissal filed on 28 March 2013 by the Applicant states in relation to Grounds 4 and 6 as follows:
“Ground 4
No particulars are provided.
Ground 6
The particulars identify that the Mystery6 product was offered by entities other than the Applicant. No particulars are provided that this alleged use was made on behalf of, or with the authority of, the Applicant. Absent proof of such facts, the opposition can not succeed.
The Footy Tip 8 product is particularised only in relation to inventive step. Section 18(d) requires that the invention, so far as claimed in any claim, not be secretly used by, or on behalf of, or with the authority of the Applicant. There is no ground of invalidity based on secret use by another or secret use of an obvious variant of the invention.”
Delegate’s Directions
In response to the ‘Application for Dismissal of Opposition’, on 4 April 2013 a Delegate proposed the following directions:
“… I propose dismissing ground 4…
I direct that further and better particulars be provided in relation to grounds 5 and 6. In relation to ground 5, the aspects of each claim that are unclear is to be provided, and the aspects of each claim that are not fairly based is be provided. In relation to ground 6, details of the date and location of the alleged secret use are to be provided. The particulars are to be provided as an amendment to the statement.”
The reasons for those directions with respect to grounds 4 and 6 were given as follows:
“Ground 4: entitlement
The particulars merely repeat the ground, and no particulars are provided. Consequently this ground should be dismissed.
Ground 6: Secret use
The statement says that Mystery6 and Footy Tip 8 were secretly used before the priority date. The material facts are clear, but there are no particulars of the date or location of the uses. Consequently, it is appropriate to direct that further and better particulars of these uses is provided.”
Consideration of the grounds and particulars of the opposition
Ground 4
In the letter of 26 April 2013 the Opponent states:
“Group 2 documents go to the ground of entitlement. The Opponent questions whether (i) the named inventors have assigned their right to apply for the patent to Tabcorp International Pty Ltd, the Applicant. Further, even if there is established a proper chain of title between the employee inventors and Tabcorp International Pty Ltd, the Opponent questions whether the inventors' earlier employment contracts and/or any other earlier agreement that involves the inventor's employer as a party is inconsistent with the any subsequent recorded assignment.”
The Group 2 documents are part of a request for a Notice to Produce being sought by the Applicant. The Group 2 documents being requested pertain to the ‘chain of title’ from inventors to the applicant.
The Opponent states at paragraph 1 of their submissions:
“The opponent concedes that, as presently pleaded, ground 4 does not have adequate particulars.”
Although the Opponent concedes that they do not have adequate particulars, this is not necessarily conceding that they cannot provide adequate particulars.
So the question is whether further and better particulars should be provided. As noted above, where a material fact is specified but with insufficient detail, that may be remedied with further and better particulars.
I consider the Opponent’s submission that there may be a break in the chain of title to be pure conjecture. In my opinion, there are presently no material facts specified. To put it another way, further and better particulars can only be requested or provided if there are some particulars to begin with.
The Opponent states at paragraph 7 of their submissions:
“The opponent submits that it should be entitled to test the applicant's claim to title by production of the relevant documents. In the event that produced documents disclose a defect in title the applicant will be entitled to rely upon ground 4 in opposition to the patent application.”
I consider this proposal to be an impermissible approach to providing a Statement of Grounds and Particulars – the evidentiary stages can only proceed if material facts have been provided in support of a particular ground. Indeed, without this basic requirement the Statement of Grounds and Particulars would serve little purpose and would be contrary to the definition given in Regulation 5.2.
The Opponent has no basis to oppose on ground 4 and consequently ground 4 is dismissed.
Ground 6
The particulars for this ground are as follows:
“The Applicant did, before the priority date, use a system to offer the Mystery6 and Footy Tip 8 wager types which falls within the scope of claims 1 to 21. To the extent the ground of secret use is established, any aspect of the system which was not public information would result in the invention being secretly used.”
The Applicant’s submissions state at paragraph 14:
The Opponent is obliged to provide, for matters of prior use, a brief description of their relevance to the ground together with brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the Invention was allegedly disclosed or sold: E.I. Dupont De Nemours and Company v Dowelanco 29 IPR 131.
In the letter of 21 June 2013 the Opponent states:
“As to Ground 6 the [Opponent] intends to amend paragraph 27 as follows:
27.The Applicant did, before the priority date, use a system to offer Mystery6 ~~and Footy Tip 8~~ wager types which falls within the scope of claims 1 to 21. In relation to the place and date of such use the opponent repeats the particulars in paragraph 12A above. To the extent the ground of secret use is established, any aspect of the system which was not public information would result in the invention being secretly used.”
Paragraph 12A of the Statement of Grounds and Particulars states:
“12. In particular, each of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 12, 13, 14, 17, 18, 19, 20 is anticipated by the use and sale of prior art wagering products, and where indicated, also by prior art documents:
A.Mystery6: The alleged invention defined by at least claims 3, 5, 6, 7, 8, 10, 12, 13, 14, 16, 19 and 21 is anticipated by the sale of Mystery6 wagering products by the Victorian TAB in Victoria, Australia during the period 5 October 2004 to 8 December 2007 …”
Since the Opponent ostensibly has material facts to support the ground of secret use it is appropriate that they should be given the opportunity to amend the Statement of Grounds and Particulars (Mobay v Dow, supra at 394). The intended amendments foreshadowed in the Opponent’s letter of 21 June 2013 appear to provide adequate particulars for this ground.
Conclusion
Ground 4 of the opposition is dismissed. Further and better particulars are required for ground 6. The Opponent has two weeks from the date of this decision to amend the Statement of Grounds and Particulars consistent with this decision.
Costs
The Opponent, Sportingbet Australia Pty Ltd, has been unsuccessful in their opposition to the proposed directions. Costs normally follow the event and I see no reason to depart from the normal award. Consequently costs are awarded against Sportingbet Australia Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents