Stord Bartz A/S v the Dupps Company - [1990] APO 33

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:      Applications No. 555337 by STORD BARTZ A/S and No. 570199
         by THE DUPPS COMPANY and opposition by each party to the
         other's application.

Background
Application No. 555337 was advertised as accepted on 18 September 1986, notice of opposition thereto was lodged on 16 December 1986 and The Dupps Company served its evidence‑in‑support on 18 January 1988. Application No. 570199 was advertised as accepted on 10 March 1988 and notice of opposition thereto was lodged on 9 June 1988 by Stord Bartz A/S. Extensions of time were allowed for Stord Bartz to serve its evidence‑in‑answer relating to application No. 555337 and its evidence‑in‑support relating to application No. 570199 but The Dupps Company objected to a fifth extension for evidence‑in‑support and a seventh extension for evidence‑in‑answer. These matters were heard on 1 November 1989 and in concurrent decisions dated 1 December 1989 I refused to allow the extensions.
On 28 December 1989 Stord Bartz applied for special leave to adduce further evidence relating to the opposition to application 570199. The further evidence was lodged with the application for special leave. The application was objected to by The Dupps Company and the matter was heard on 12 March 1990. Other matters relating to the two oppositions were also dealt with at that

hearing. On 5 April 1990 Stord Bartz made a second application for leave to adduce a second item of further evidence relating to the opposition to 570199. This second item was also lodged with the application. Both parties lodged written submissions in the matter after The Dupps Company objected to the second application for special leave. In decisions dated 21 May 1990 and 7 August 1990 I refused to grant Stord Bartz special leave to adduce the further evidence.
After the hearing on 12 March 1990, Stord Bartz requested leave to amend the complete specification of application 555337. The request was advertised on 14 June 1990, there was no opposition and the request was allowed on 12 September 1990.

Subject Matter
The specifications of applications 555337 and 570199 relate to dry rendering of meat by‑products. The inventions are similar in that they are both characterized by an initial part of the rendering process where a heated slurry of meat by‑products is separated by a press into liquid and solid fractions or phases. Claim 1 of 555337, as proposed to be amended by the request allowed on 12 September 1990, reads as follows:

"Process for the production of fodder and fat from animal raw materials in the form of slaughter‑house waste, characterised in

that the raw material, after having been subjected to heating to a temperature ranging from 60oC to 100C, immediately is separated in a press into a solid material phase and a fluid phase;

the solid material phase is separately subjected to a drying step and thereafter to one or more subsequent steps for the separation of fat and solid material individually;

while the fluid phase is…

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 Stord Bartz A/S v the Dupps Company

Details

AGLC: Stord Bartz A/S v the Dupps Company [1990] APO 33
Case: [1990] APO 33
Decision Date: 9 October 1990

CaseChat Overview and Summary

Stord Bartz A/S and The Dupps Company both lodged patent applications for processes related to the dry rendering of meat by-products. The Dupps Company opposed the application by Stord Bartz and vice versa. The disputes included issues of priority, obtaining, and whether the specifications were fully described and distinguished from prior art. The court was required to decide these issues and whether any evidence not yet admitted could constitute a bar to sealing the patents.

The court began by addressing the oppositions, noting that Stord Bartz's proposed amendments to its specification would overcome the objection of prior claiming, thus dismissing the opposition to Stord Bartz's application. However, the court awarded costs to The Dupps Company because the opposition was justified. For The Dupps Company's application, the court dismissed the opposition on the grounds of obtaining, insufficient description, and prior art distinctions, awarding costs to Stord Bartz. The court then considered evidence not admitted into the proceedings, concluding that neither party had provided enough evidence to prove the other had obtained the invention, thus neither patent application was clearly invalid.

In its final decision, the court directed that both patent applications proceed to sealing. The court acknowledged the declarations and evidence but found them insufficient to establish clear invalidity of either patent. Consequently, the patents for both applications were allowed to proceed to sealing, with costs awarded to the respective parties based on the merits of their oppositions.

Orders