Sportingbet Australia v Tabcorp International Pty Ltd
[2014] APO 21
•11 April 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21
Patent Application/Patent: 2009220019 & 2011100780
Title:A wagering system
Patent Applicant: Tabcorp International Pty Ltd
Opponent: Sportingbet Australia
Delegate: Dr B. Akhurst
Decision Date: 11 April 2014
Hearing Date: Written submissions filed 21 & 28 February 2014
Catchwords: PATENTS – extensions of time to file evidence in answer in two oppositions – reg 5.9 – whether applicant has acted promptly and diligently – whether circumstances beyond control – extensions refused
Representation: Patent applicant: Freehills Patent Attorneys
Opponent: Peter Maxwell & Associates
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009220019 & 2011100780
Title:A wagering system
Patent Applicant: Tabcorp International Pty Ltd
Date of Decision: 11 April 2014
DECISION
I refuse the extensions.
Costs are awarded according to Schedule 8 against Tabcorp.
REASONS FOR DECISION
This matter concerns requests for an extension of time to file evidence in answer (EIA) in two oppositions under sections 59 and 101M of the Act which are determined under regulation 5.9 of the Patents Regulations as amended on 15 April 2012 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
Background
Application 2009220019 for a standard patent was filed by Tabcorp International Pty Ltd (Tabcorp) on 25 September 2009. Application 2011100780 for an innovation patent was filed by Tabcorp on 30 June 2011 as a divisional of 2009220019. The relevant history of these applications is summarised below.
2009220019
After examination, application 2009220019 was advertised as accepted on 30 August 2012. On 30 November 2012, Sportingbet Australia (Sportingbet) filed a notice of opposition to grant of a patent and served a statement of grounds and particulars (SGP) on 28 February 2013.
On 28 March 2013, Tabcorp requested dismissal of the opposition (wholly or in part) and on 22 April 2013 requested a direction for further and better particulars for the grounds of novelty, inventive step and manner of manufacture. After Sportingbet requested to be heard regarding the dismissal request, the hearing officer dismissed ground 4 (entitlement) and directed that further and better particulars be provided for ground 6 (secret use) on 16 July 2013.
Responding to the hearing officer’s decision and the delegate’s directions for further and better particulars, Sportingbet filed amendments to the SGP on 30 July 2013 and 18 September 2013, which were allowed unopposed on 20 August 2013 and 14 October 2014, respectively.
After gaining extensions of time under the provisions of the Patents Regulations prior to 15 April 2013, Sportingbet completed the evidence in support of the opposition (EIS) on 20 September 2013. Evidence in answer (EIA) was due on 20 December 2013.
2011100780
Tabcorp’s innovation patent 2011100780 was advertised as sealed on 4 August 2011 and as certified on 22 September 2011.
On 20 September 2013, Sportingbet filed a notice of opposition to the innovation patent accompanied by a SGP and the EIS. This evidence was the same as that filed in support of the 2009220019 opposition. Tabcorp was advised on 24 September 2013 that EIA was due 24 December 2013.
2009220019 & 2011100780
In each case, on the day the evidence was due, Tabcorp requested an extension of 3 months to file EIA.
Responding to both requests on 8 January 2014, the delegate advised Tabcorp that she was not satisfied that the extensions were justified as required by reg 5.9(2) and requested further information. After Tabcorp responded on 22 January 2014, the parties were informed that the Commissioner intended to grant the extensions, subject to a party requesting to be heard. On 31 January 2014, Sportingbet opposed both extensions and the matters were set for hearing by written submissions. Both parties filed submissions on 21 February 2014 and Tabcorp responding submissions on 28 February 2014.
Tabcorp’s submissions consisted of a declaration by attorney Thor North of Freehills exhibiting copies of its two extension requests and a copy of its 22 January 2014 letter in support of both. Tabcorp’s responding submissions provided additional information in response to Sportingbet’s submissions in chief.
On 3 March 2014, Tabcorp requested directions for further and better particulars in the 2009220019 opposition, based on the information provided by Sportingbet in its submissions for this hearing. That matter is not under consideration in this decision.
The Law
As the period for filing evidence in answer commenced after 15 April 2013, this request is determined under regulation 5.9 as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) – See subregulation 23.26(2)(Item 2). That item also provides that the reference in subregulation 5.9(1) to regulation 5.8 is taken to be reference to regulation 5.8 as in force before 15 April 2013 and paragraph 5.10(1)(b) and subregulation 5.10(2) as in force before 15 April 2013 are taken not to apply.
Consequently while the present opposition was filed before 15 April 2013, and generally is governed by the provisions of Chapter 5 of the regulations that applied before that date, extensions of the time for filing the evidence in answer 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 discretionary power to extend the evidentiary time periods:
(1) 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.
This power is qualified by subregulation 5.9(2), which states:
(2) 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):
(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.
As noted by the hearing officer in Fonterra Co-operative Group Limited v Meiji Dairies Corporation [2014] APO 11 at [10], subregulation 5.9(2) sets a serious test, and the party seeking the extension bears the onus of convincing the Commissioner that the conditions of subregulation 5.9(2) have been made out.
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extended period having regard to what is reasonable in the circumstances (subregulation 5.9(3)).
Application of the law
Both parties accepted the delegate’s analysis of the law as set out in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 (TRED), and in particular the summary of the requirements of regulation 5.9, which I adopt for the purposes of this decision:
“34. It follows that I need to ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
35. I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.”
The facts
In the table below I have summarised the relevant facts and dates surrounding Tabcorp’s efforts to file EIA in the oppositions by the due date. I have identified this information from the Patent Office files, Tabcorp’s extension requests, its response to the delegate’s request for further information (which included a chronology of Tabcorp’s activities) and Tabcorp’s submissions for the hearing. The timing of the Spring Racing Carnival (21 September 2013 to 24 November 2013) is indicated to the right of the table by a grey bar.
Date Patent application 2009220019 Cert. innov. Patent 201100780 30 Nov 2012 Notice of Opposition filed. 28 Feb 2013 SGP filed. 28 Mar 2013 Tabcorp request dismissal of the opposition (wholly or in part). 17 Apr 2013 Sportingbet agreed to provide further and better particulars for s 40 and requested to be heard regarding grounds relating to entitlement and secret use. 22 Apr 2013 Tabcorp requested a direction for further and better particulars for novelty, inventive step and manner of manufacture. 16 Jul 2013 The hearing officer considering the dismissal request dismissed the opposition in respect of entitlement and directed Sportingbet to provide further and better particulars for secret use. 30 Jul 2013 Sportingbet requested a first amendment to the SGP (deleting entitlement and adding additional particulars for novelty, inventive step, s40 and secret use). This amendment increased the number of cited prior art documents from 18 to 67. 12 Aug 2013 Prior art documents 1-67 mentioned in the SGP made available on Objective Connect. 20 Aug 2013 First amended SGP allowed unopposed. 4 Sep 2013 Delegate directed further and better particulars for manner of manufacture. 18 Sep 2013 Sportingbet filed further amendments to the SGP with additional particulars for manner of manufacture 20 Sep 2013
EIS filed consisting of 4 declarations (324 pages of expert evidence and 41 exhibits in 731 pages) and 67 prior art documents (2963 pages).
Notice of opposition, SGP and EIS filed.
(The EIS is the same as that filed in the opposition to 2009220019.)
21 Sep 2013
Spring Racing Carnival commences
THE SPRING RACING CARNIVAL
Week beginning
23 Sep 2013
Week 1 of the evidentiary period.
On 25 September 2013, the Patent Office advised Tabcorp that EIA is due 20 December 2013.
On 24 September 2013, the Patent Office notified Tabcorp of the opposition documents and advised that EIA is due 24 December 2013.
The EIS, which is common to both oppositions, was received by Tabcorp.
Preliminary review of evidence by commencing external patent attorneys and advice sought on next steps.
Tabcorp’s internal Legal Team conducts conferences with the relevant business unit heads to discuss evidence, experts, and resourcing constraints during the Spring Racing Carnival period.
Preparation of preliminary listing of potential experts.
Review of evidence commenced by the applicant.
During this period one of Tabcorp’s external attorneys is absent from the office. Responsibility is handed over to attorney’s partner to continue work.
Week beginning
30 Sep 2013
Week 2
Tabcorp continues internal discussions regarding potential experts. Opponent’s evidence provided to an expert in information technology for consideration.
Correspondence with external patent attorneys about ongoing process.
Evidence period reported to applicant by external patent attorneys after Patent Office confirms due date on 3 October 2013.
Week beginning
7 Oct 2013
(4-day week)
Week 3
Further discussion of potential experts within business, discussion of case with internal technical expert with a background in software development and gaming technology.
Telephone conference with external patent attorneys about the prior art and evidence.
Week beginning
14 Oct 2013
Week 4
Further amended SGP (containing additional particulars for manner of manufacture ground) allowed unopposed on 14 October 2013. Both external attorneys absent from office on travel commitments entered into before the evidence in support was received.
Week beginning
21 Oct 2013
Week 5External attorney absence from office continued. Week beginning
28 Oct 2013
Week 6
External attorneys review of opponent’s cited prior art and evidence. Week beginning
4 Nov 2013
Week 7
Evidence review by external attorneys continued, and summary documentation prepared. Week beginning
11 Nov 2013
Week 8
Evidence and prior art review with respect to independent claims completed for novelty grounds based on all documents. Parallel review of the output by second attorney. Week beginning
18 Nov 2013
Week 9
Extension of review, by external attorneys, to dependent claims. Week beginning
25 Nov 2013
Week 10
Review of novelty citations continued with respect to dependent claims. Week beginning
2 Dec 2013
Week 11
Review of evidence continues with respect to dependent claims.
External attorney review of non-prior art aspects of Opponent’s case continues in parallel with evidence review.
Investigation of allegedly anticipatory uses of the invention by external attorneys in parallel with review of documentary prior art, including review of additional websites and web archive material referring to acts noted in opponent’s revised SGP.
Week beginning
9 Dec 2013
Week 12
Detailed consideration of documentary prior art and investigation of allegedly commencing anticipatory uses of the invention by external attorneys continued in parallel.
Detailed correlation of allegations raised in SGP on a claim by claim basis to statements made in opponent's evidence, by additional patent professional supporting external attorneys.
Week beginning
16 Dec 2013
Week 13
Consideration and development of overall evidence response strategy with Patent Attorneys, in light of analysis conducted in preceding weeks.
An evidence in answer strategy was finalised in co-operation with Tabcorp’s legal team by 16 December 2013.
Evidence in answer due 20 Dec 2013
Application for an extension of time to file EIA filed by Tabcorp the same day.
Week beginning
23 Dec 2013
Week 14
Evidence in answer due 24 Dec 2013
Application for an extension of time to file EIA filed by Tabcorp.
Has the party made all reasonable efforts to comply with all relevant filing requirements?
Paragraph 5.9(2)(a)(i) requires consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings, rather than its compliance with the particular evidentiary period in question, the latter being addressed by the more specific requirement of paragraph 5.9(2)(a)(ii) (Merial Limited v Novartis AG [2013] APO 65 (Merial) at [16]).
In deciding whether a party has made all reasonable efforts to comply with all relevant filing requirements, it is necessary to understand the actions that they have taken (for instance, what was done, when it was done, how it was done, by whom it was done) covering at least the period in question, and the nature of the evidence that they are preparing (TRED at [40]).
2009220019
The request for dismissal
The relevant filing requirements in the 2009220019 opposition include Tabcorp’s earlier filing of a request for dismissal of the opposition. This request was filed in the approved form within 1 month of service of the SGP, as required by regulation 5.5 as in force immediately before 15 April 2013. Prima facie, Tabcorp made all reasonable efforts to comply with this filing requirement. This leaves the question of whether Tabcorp has made all reasonable efforts to comply with the filing requirements for EIA.
The evidence in answer
On 22 January 2014, Tabcorp submitted that while ordinarily the applicant can review the merits of the opponent’s case in the SGP while the opponent is preparing EIS, in this case, due to the lateness of the SGP and cited prior art, it had largely had to perform these tasks and prepare the evidence during its EIA period.
Sportingbet contended that it was unreasonable for Tabcorp to have waited until the EIS was received before commencing the review of the prior art. It noted that by 30 July 2013, the first amended SGP was available, which identified all prior art documents relied on in the EIS, and further particularised novelty, obviousness, section 40 grounds and secret use. Sportingbet noted that had provided Tabcorp with the 19 citations in the original SGP by early April 2013 and many were available electronically via a Google search.
Responding, Tabcorp argued that Sportingbet’s suggestion that it could have started work earlier was irrelevant, and it was “misconceived” to suggest that an applicant should be obliged to undertake its own search for prior art, “somehow confirm that it is the same document referred to by the opponent and then commence an analysis”. Tabcorp contended that before the EIS was received there was no reason for it to believe that the matter in the SGP was supportable by reasonable evidence or that it was relevant to the opposition.
In an opposition to a standard patent, an applicant should start to think about and consider its case in answer before the EIS is completed. If the party could demonstrate it had done so at an early stage, this would assist the Commissioner when considering an extension request under regulation 5.9. Notwithstanding, steps such as engaging experts and drafting relevant declaratory evidence is costly and, in general, it may be reasonable for an applicant to defer the cost of these actions until after the EIS is filed. (See Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 (Shelford) at [18])
Given my finding below in this opposition, I do not need to decide whether Tabcorp made all reasonable efforts before the EIS was filed. It appears that substantially all of its efforts to file EIA in the 2009220019 opposition occurred during that evidentiary period. For this reason, I will consider its actions in the context of whether it has acted promptly and diligently in relation to the preparation and filing of EIA.
2011100780
In an opposition to an innovation patent, the notice of opposition, SGP and EIS are filed together. In this case, prior to the filing of the opposition documents, there were no relevant filing requirements with which Tabcorp had to comply. Therefore, it is not necessary to consider separately whether Tabcorp made all reasonable efforts. If it has acted promptly and diligently in the preparation and filing of EIA in this opposition, Tabcorp will necessarily have made all reasonable efforts to comply.
Was the failure to file the evidence despite acting promptly and diligently at all times?
2009220019 & 2011100780
Sportingbet’s submissions were to the effect that Tabcorp had not provided enough information to establish it had complied with the requirements of paragraph 5.9(2)(a).
To establish its promptness and diligence, in its extension requests Tabcorp submitted that since the commencement of the periods for filing EIA, it had undertaken the following actions relevant to the preparation of the evidence:
· reviewed Sportingbet’s final amended SGP;
· reviewed the cited documentary prior art;
· conducted additional research into the acts cited by the Opponent as prior art;
· reviewed the evidence in support;
· commenced discussions with relevant staff within the Applicant’s business with a view to identifying potential experts with knowledge of the acts discussed in the evidence in support;
and for the 2011100780 opposition it had also:
· commenced work on the possible preparation of an amendment to the claim of the innovation patent.
Tabcorp submitted that despite investing significant resources in order to review and analyse the evidence and the supporting prior art and significant progress having been made, it was unable to complete the EIA in the time provided due to the following unfavourable circumstances:
· the amendments to the statement of grounds and particulars late in the opposition process;
· the large amount of evidence and the complexity of the case; and
· the Spring Racing Carnival.
I will address each of these circumstances in turn.
The amendments to the statement of grounds and particulars in the 2009220019 opposition
In its extension request, Tabcorp submitted that the late production of adequate particulars in the 2009220019 opposition hampered its efforts to prepare evidence.
Tabcorp was notified of the first substantial amendments to the SGP on 31 July 2013 and in the circumstances could assume the amendment would be allowed. After that date, and in particular by 20 August 2013 when the first amended SGP was allowed, Tabcorp would have been aware of the majority of case against it. The prior art documents were available on Objective Connect by 12 August 2013. Consequently, relevant to subreg 5.9(2)(a)(ii), Tabcorp had the full benefit of the EIA period to review and understand the prior art.
The later amendment to the SGP further particularised manner of manufacture only. Tabcorp’s submissions do not suggest that its evidence on this ground had been delayed as at 20 December 2013.
Overall, I do not consider that the amendments to the SGP in the 2009220049 opposition significantly interfered with Tabcorp’s ability to prepare its evidence during the EIA period.
The amount of evidence and complexity of the case
Regarding the resources it allocated to the task, Tabcorp submitted that its utilisation of its internal legal team, and two partners, a registered attorney and a patent professional of an external legal team, illustrate its actions exceed the requirements of acting reasonably, promptly and diligently. I agree that appointing a team to prepare the EIA is a reasonable strategy, particularly in a complex opposition. However, the appointment of a team alone does not establish promptness and diligence – the actions taken by the team on behalf of Tabcorp must be shown to be prompt and diligent.
Tabcorp submitted that the magnitude of the case put against it must be taken into account when determining the time frames in which stages of evidence preparation need to be completed by an applicant. Clearly, the relevant facts must be taken into account when considering an extension request under paragraph 5.9(2)(a). The circumstances in which a party found itself provide the context in which to determine whether it acted promptly and diligently (and reasonably). But the circumstances, unless exceptional, do not absolve the party seeking the extension from providing enough information to enable the Commissioner to form the opinion that the party satisfies the requirements of paragraph 5.9(2)(a).
A party may provide the relevant information in the manner of their choice. In general, it assists the Commissioner if the party seeking an extension of time to file evidence provided a chronology setting out actions taken by the party to prepare and file the evidence, including in particular, information as to what was done, when it was done, how it was done and by whom it was done, covering at least the evidentiary period in question, and the nature of the evidence they are preparing (consistent with TRED at [41] in the context of “all reasonable efforts”). Any significant gaps or delays in a chronology, where a relevant action would generally be expected to have taken place should be explained. The nature of a delay and an explanations of what was done to attempt to mitigate the delay are relevant considerations where a request is made to extend the time for filing evidence, and information in this regard should be provided. (Shelford at [19])
Tabcorp provided a chronology on 22 January 2014, albeit brief in detail. Responding to Sportingbet’s criticism that it has provided little detail of the work performed by its attorneys and employees, Tabcorp submitted:
“The details of the work are beside the point and given the circumstances of the dominant purpose being to provide advice, it would be contrary to the intent and purpose of s 200(2A) to construe Regulation 5.9 as requiring disclosure of such details.”
On this point, details of the work carried out by a party may need to be disclosed to the Commissioner where it is relevant to establishing that the party seeking an extension of an evidentiary period has been prompt, diligent and reasonable for the purposes of subreg 5.9(2). As indicated above, a party may provide the necessary information in the manner of their choice. Where a party considers that some information is confidential, they may redact sensitive details, or summarise the information. However, they cannot claim that because the relevant information is confidential they do not need to satisfy subreg 5.9(2).
The period for filing EIA in these oppositions commenced on 20 September 2013 (the day the EIS was filed in the two oppositions) and ran for approximately 13 weeks. The Spring Racing Carnival took place between 21 September 2013 and 24 November 2013, coinciding with weeks 1 to 9 of the EIA period in each opposition. I have considered the impact of this event below.
In order to establish it has been prompt and diligent at all times during the EIA period, Tabcorp relied primarily on the information in its applications and chronology regarding the amount of work it had completed during the 3 month period for filing EIA in these oppositions. In particular, Tabcorp submitted that the EIA had been completed because of the extensive work required to adequately analyse the evidence and prior art submitted by the opponent.
As noted by Tabcorp, the hearing officer in TRED at [51] confirmed that the Commissioner does not expect a party to perform beyond what is humanly possible. Nevertheless, for an extension to be granted under paragraph 5.9(2)(a), a party must provide enough information to justify its request. The question is whether Tabcorp has been prompt and diligent at all times in the preparation and filing of EIA. Below, I have considered this question having particular regard to the actions Tabcorp has taken to review the EIS and its efforts to engage an expert.
Review of the evidence
The EIS of both oppositions is identical and consisted of 325 pages of expert evidence, 730 pages of exhibited material, and 67 prior art documents (2963 pages).
Based on the information in Tabcorp’s chronology, Sportingbet submitted that during weeks 2-5 of the EIA period there was no review of the prior art material and no work whatsoever conducted during weeks 4-5, when two attorneys were absent from the office. Responding, Tabcorp confirmed that its internal experts were involved in the review of the prior art material during this period. Regarding the attorneys absences in weeks 4-5, Tabcorp submitted that there were no other partners to which they could delegate the continued analysis of the case, and that even if one had been available, they would have spent most of the time of the attorneys absence familiarising themselves with the case, before doing any work. In view of this explanation, I accept that Tabcorp’s internal experts contributed to the review of evidence during weeks 2-5 and the attorneys’ absence during weeks 4-5 could not be mitigated.
On 22 January 2014, Tabcorp submitted that the analysis of the evidence and prior art “commenced on 25 September 2013 and was performed by three attorneys and a patent professional in parallel”. From the chronology provided, two patent attorneys undertook review of the evidence and prior art during weeks 1 and 6-13 of the EIA period, completing the review for the independent claims and novelty grounds by week 8. During weeks 9-12, they expanded the review to the dependent claims and “allegedly anticipatory uses” of the invention. A patent professional assisted the attorneys during week 12. There is no clear information regarding the role of the third attorney. From its chronology and submissions Tabcorp’s internal experts contributed to the review of evidence during weeks 1-5.
Tabcorp repeatedly asserted that the SGP in the 2009220019 opposition required it to review 67! (factorial) combinations of prior art documents to defend its case on inventive step grounds. It argued that no reasonable effort could have achieved the review of the particularised matter as well as the preparation of evidence, in the time available. I accept that consideration of inventive step would require consideration of the disclosure of a large number of documents in combination, which would take time. However, any additional time required for this task is not relevant to establishing Tabcorp has been prompt and diligent during weeks 1-13 of the EIA period since, from its chronology, when that period expired Tabcorp had not yet commenced its review of obviousness in light of the combined disclosure of prior art documents.
Sportingbet submitted that 67 documents is not an exceptionally high number in an opposition. It argued that Tabcorp has not demonstrated that it has acted promptly and diligently at all times, in that the chronology does not indicate how long the attorneys working on the evidence spent in reviewing the evidence. It noted that the statement that an attorney worked on the case during a week could represent full time work or as little as 12 minutes.
Sportingbet drew my attention to the fact that its expert Mr Kopff, who provided 252 pages of declaratory EIS, reviewed the full set of citations extensively in a total of 119 hours (approximately 15 days work for one person based on an 8 hour day). Responding, Tabcorp noted the absence in the written EIS of 22 documents listed in the SGP, concluding that these documents were not considered by the opponent’s experts. It argued that full consideration of all documents would take much longer. However, Sportingbet’s evidence clearly states that Mr Kopff reviewed the full set of citations, and I consider it more likely that having done so, he considered some less relevant and for that reason did not refer to them in his evidence.
Tabcorp did not otherwise dispute the time taken by Mr Kopff to review the evidence, nor did it provide any more precise detail of the time its team had spent on the task. Instead, it contended that given the practicalities of life as an applicant and attorney, it is not possible to work full time in preparing evidence. I accept this submission. Nevertheless, review of the prior art by a single expert took approximately 3 weeks continuous work, whereas review by 2-3 patent attorneys, a patent professional and Tabcorp’s experts, has extended to 3 months. Although an attorney is not expected to work full time on the case and I have found below that Tabcorp’s experts and internal legal team had other commitments during weeks 1-9 of the EIA period, this slow progress by the team does not support a view that Tabcorp’s review was conducted promptly and diligently.
In seeking an extension, Tabcorp provided very little precise information on the time its team spent in reviewing the evidence, relying instead on a list of its actions and, from this, an inference that it must have acted promptly and diligently (and took all reasonable efforts) in order to complete them. The Commissioner accepted this at first instance. However, the time taken by Sportingbet’s expert casts doubt on the actions of Tabcorp’s team during the EIA period, and Tabcorp has not provided any additional information on which I could otherwise be satisfied that it has acted promptly and diligently at all times during the EIA period.
Appointment of experts
Sportingbet submitted that Tabcorp has not yet commenced interviewing prospective experts. It noted that identifying suitable witnesses is ordinarily a difficult and time-consuming task and a diligent approach would be to commence this search as soon as the SGP is obtained and the basic theory of the opponent’s case ascertained.
It is difficult to determine from Tabcorp’s seemingly conflicting statements whether it has engaged an expert to provide the EIA or not. On 22 January 2014, Tabcorp noted that “expert input regarding the application and the evidence was also obtained at the beginning of October 2013 from an expert with a background in software development and gaming technology”. Two paragraphs later, “there was no unnecessary delay in seeking to engage an expert because it was not possible or appropriate to engage an expert before at least an initial review of the evidence was completed”. In its responding submissions a month later, Tabcorp asserted that it had consulted experts in the matter and it is unreasonable, and would be waste of resources, if an applicant were required to conduct a search for a further expert before it has identified the matters on which any further expert is required to give an opinion.
It would assist the Commissioner if the applicant for an extension of an evidence period could, where relevant, explicitly confirm that relevant expert(s) had been approached and/or retained to provide the statements to be filed in evidence. In this case, I consider a reasonable interpretation of Tabcorp’s responding submissions, and in particular its references to engaging a “further expert” is that a decision has now been taken that one or more of its internal experts will provide EIA to the opposition.
From its chronology, in the early weeks of the EIA period Tabcorp’s legal team, in consultation with other staff, were involved in the identification of experts. During week 1, Tabcorp prepared a “preliminary listing of potential experts”. During weeks 2-3, Tabcorp continued internal discussions regarding potential experts. That an overseas expert may also need to be engaged can be inferred from the following statement in both extension requests:
“… many of the prior art acts relied on by the Opponent occurred overseas which complicates the task of researching the acts and identifying persons with knowledge of the acts.”
If an additional expert is to be engaged, an applicant acting promptly and diligently could reasonably be expected to at least approach the most relevant of the experts on its list, in order to confirm their availability for the task. This is particularly the case where the expert lives overseas. It is not apparent from the information before me that Tabcorp has yet done this.
The Spring Racing Carnival
During weeks 6-9 of the EIA period, while the Spring Racing Carnival was ongoing, Tabcorp’s chronology and submissions are silent regarding any work by its internal legal team or technical experts with respect to the EIA. It may be that there was nothing they could contribute at this time. However, there were no submissions to this effect. I will proceed on the basis that the apparent inactivity of Tabcorp’s internal team during this period is to be justified by the Carnival.
Regarding the demands on its staff during the Carnival, Tabcorp’s extension request provided the following information:
“The Patentee is the licensed totalizator operator for racing in NSW and Victoria. The evidence period coincided with the Spring Racing Carnival that ran from 21 September 2013 through 24 November 2014. In the lead up to the Spring Racing Carnival and during the Carnival the relevant technical staff within the Patentee’s business are under extreme pressure to ensure the delivery of totalizator services during this period of peak activity. … Marketing and legal staff are also heavily engaged in activities surrounding the Carnival. This severely restricts the availability of staff for all other activities.”
On 22 January 2014, Tabcorp explained that in the lead up to and during the Spring Racing Carnival its technical staff, and in particular its IT staff, are focussed on improving the stability and effectiveness of Tabcorp’s systems. This technical team are the most relevant to assisting Tabcorp’s internal legal team to review and understand the EIS and identify the most relevant potential experts. Given the focus on the preparation for and system stability during the Carnival, the technical team were limited in their ability to assist its legal team. Over the same period, Tabcorp’s legal team were primarily engaged in supporting the business, in particular to ensure contracts with technical suppliers were in place and the increased marketing activities were compliant with relevant wagering advertising laws, so their ability to devote significant time to reviewing evidence was further constrained.”
While increased activity with respect to IT systems and legal matters in the lead up to the Carnival is understandable, I find it surprising that these matters, particularly legal matters such as contracts and compliance with marketing activities during the Carnival, are not settled by the time the Carnival commences. Nevertheless, I accept that Tabcorp’s internal resources were unable to devote significant time to the opposition during weeks 1-9 of the EIA period, other than that indicated in Tabcorp’s chronology and submissions and discussed elsewhere in this decision.
As a separate issue, the Spring Racing Carnival is a yearly event and as such it must have been anticipated by Tabcorp, who would have had the opportunity to consider alternative arrangements aimed at minimising the delays the Carnival might cause in the preparation of EIA. The chronology establishes that during week 1 of the EIA period, Tabcorp’s legal team discussed resourcing constraints during the Spring Racing Carnival. No details were provided of the discussions and no submissions were made that Tabcorp considered any alternative arrangements (e.g. managing its internal resources to cover for the normal duties of key staff in the EIA team, for example with overtime, or the use of additional external resources for the evidentiary process), or conversely why it was not feasible to make alternative arrangements in the circumstances.
The absence of any clear indication that Tabcorp considered any measures to mitigate the delays caused by the Carnival to the preparation of evidence, its information is insufficient to establish that it acted promptly and diligently during the EIA period (Merial at [22] applied).
Summary – prompt and diligent
In the face of Sportingbet’s opposition, the information provided by Tabcorp is insufficient to establish that it acted promptly and diligently in its review of the EIS or in its approach to engaging experts.
In the absence of exceptional circumstances, a party seeking an extension of an evidence period that commenced after 15 April 2013 must provide enough information regarding its own actions including, where appropriate, those of its agent(s) and attorney(s), in order that the Commissioner can be satisfied that it has acted promptly and diligently for the purposes of paragraph 5.9(2)(a)(ii). Tabcorp has not discharged this onus.
Were there exceptional circumstances that warrant the extension?
Tabcorp identified three circumstances as exceptional in this case:
· The Spring Racing Carnival
· The amendments to the statement of grounds and particulars late in the opposition process
· The nature and complexity of the case and the amount of evidence
The Spring Racing Carnival
I cannot accept Tabcorp’s submission that the Spring Racing Carnival is an exceptional circumstance. The Carnival occurs every year and as such its occurrence could be anticipated and acted upon to some degree at least.
The amendments to the SGP
Amendments to the SGP occur frequently in opposition proceedings. I see no reason to consider this an exceptional circumstance in this case.
The nature and complexity of the case including the amount of evidence
Regarding the nature and complexity of the evidence, Tabcorp submitted:
“… exceptional circumstances do exist where the applicant has acted promptly, but no reasonable effort could have achieved the necessary review of more than 130 acts, documents and combinations, as well as the subsequent preparation of evidence within the time available.”
Other than those circumstances explicitly identified in 5.9(5), the term “exceptional circumstances” encompass matters outside the evidentiary process and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence (TRED at [65]).
Many oppositions before the Commissioner involve a substantial body of evidence. Although it may be outside Tabcorp’s control, the nature and complexity of the evidence falls clearly within the evidentiary process. Therefore, I do not consider the evidence in these oppositions to constitute an exceptional circumstance.
Furthermore, Tabcorp has not discharged the onus of satisfying the Commissioner that an extension is justified under subreg 5.9(2)(a) and it is not appropriate in the circumstances of this case that Tabcorp seek to invoke the “exceptional circumstances” leg of subreg 5.9(2) to circumvent this defect.
Summary – Exceptional circumstances
I am not satisfied that the above matters represent exceptional circumstances, either individually or in combination.
Conclusion
I am not satisfied that Tabcorp has acted promptly and diligently at all times to ensure the EIA was filed by the due date in the oppositions to patent application 2009220019 and innovation patent 2011100780. Nor am I satisfied that there are exceptional circumstances to warrant the grant of an extension of time to file the EIA in these oppositions. It follows that I have no discretion and the extensions must be refused.
The period for filing evidence in answer to the oppositions to patent application 2009220019 and innovation patent 2011100780 ended on 20 December 2013 and 24 December 2013, respectively. Since there was no evidence filed in answer to the oppositions, there is no requirement for evidence in reply. These matters may be set for hearing.
COSTS
Sportingbet has been successful in its opposition. Therefore, I award costs according to Schedule 8 against Tabcorp.
Dr B. Akhurst
Delegate of the Commissioner of Patents
11