VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd
[2009] FCA 593
•2 June 2009
FEDERAL COURT OF AUSTRALIA
VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd [2009] FCA 593
PATENTS – standard patent – whether a direction should be given to the Commissioner under s 97(3) of the Patents Act 1990 (Cth) to re-examine the patent in suit – whether Commissioner’s report under s 100 of the Act will reduce cost of proceeding and expedite its determination – application dismissed
Patents Act 1990 (Cth) ss 97, 98, 99, 100, 101
Emperor Sports Pty Ltd v Commissioner of Patents (2005) 146 FCR 159 cited
Termite Tite (NZ) No 2 Ltd v Term-Seal (Aust) Pty Ltd (2007) 74 IPR 16 citedVIP PLASTIC PACKAGING PTY LTD v B.M.W. PLASTICS PTY LTD; and B.M.W. PLASTICS PTY LTD (ACN 006 358 934); VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705)
VID 680 of 2008
KENNY J
2 JUNE 2009
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 680 of 2008
BETWEEN: VIP PLASTIC PACKAGING PTY LTD
Applicant
AND:
AND BETWEEN:
AND:
B.M.W. PLASTICS PTY LTD
RespondentB.M.W. PLASTICS PTY LTD (ACN 006 358 934)
Cross-ClaimantVIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705)
Cross-Respondent
JUDGE:
KENNY J
DATE OF ORDER:
2 JUNE 2009
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.The motion, notice of which was originally dated 8 May 2009, be dismissed.
2.The respondent/cross-claimant pay the costs of the motion of the applicant/cross-respondent.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 680 of 2008
BETWEEN: VIP PLASTIC PACKAGING PTY LTD
Applicant
AND:
AND BETWEEN:
AND:
B.M.W. PLASTICS PTY LTD
RespondentB.M.W. PLASTICS PTY LTD (ACN 006 358 934)
Cross-ClaimantVIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705)
Cross-Respondent
JUDGE:
KENNY J
DATE:
2 JUNE 2009
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
INTRODUCTION
VIP Plastic Packaging Pty Ltd commenced this original proceeding by an application and statement of claim filed on 28 August 2008, claiming to be the registered owner of Australian Standard Patent No 2001235262, entitled “Variable-length dip tube for a fluid transfer container”. The complete specification for the patent was published and became open for inspection on 3 September 2001. VIP Plastic alleged that B.M.W. Plastics Pty Ltd has infringed the patent in suit.
In an amended defence and cross-claim filed on 26 February 2009, B.M.W. Plastics denied infringement and, in its cross-claim, alleged that the patent in suit was invalid. B.MW. Plastics sought an order that the patent be revoked pursuant to s 138 of the Patents Act1990 (Cth). In its particulars of grounds of invalidity, B.M.W. Plastics alleged that the patent in suit and its claims were invalid on the grounds of lack of novelty and lack of inventive step, as well as various other grounds.
VIP Plastic denied that the patent in suit was invalid.
This is an application by the respondent/cross-claimant, B.M.W. Plastics, for an order under s 97(3) of the Patents Act that the Commissioner of Patents be directed to re-examine a complete specification of the patent in suit. The notice of motion originally dated 8 May 2009, by which this application is made, also seeks an order as to the documents to which the Commissioner must have regard in re-examination.
VIP Plastic opposes the orders sought in the motion.
Subsection 97(3) of the Patents Act provides that:
Where the validity of a patent is disputed in any proceedings before a prescribed court under this Act, the court may direct the Commissioner to re-examine the complete specification and the Commissioner must re-examine the specification accordingly.
Section 98 requires the Commissioner to make a report on a re-examination. Subsection 98(1) makes it clear that re-examination under s 97 is limited to the issues of novelty and obviousness. Section 98 states that:
(1)On re-examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:
(a)is not novel; and
(b)does not involve an inventive step.
(2)For the purposes of subsection (1), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).
By virtue of subs 98(2), the Commissioner is limited to considering the prior art base as disclosed in documents.
The re-examination provisions were introduced following the report of the Industrial Property Advisory Committee to the Minister for Science and Technology dated 29 August 1984. The report was entitled “Patents, Innovation and Competition in Australia”, and recommended the availability of re-examination “so as to utilise the expertise in the Patent Office to decide appropriate questions in the hope that this may reduce the costs of, or in some cases avoid the need for, court proceedings”: see the report as quoted in Emperor Sports Pty Ltd v Commissioner of Patents (2005) 146 FCR 159 at 179-180 per Lindgren J and Termite Tite (NZ) No 2 Ltd v Term-Seal (Aust) Pty Ltd (2007) 74 IPR 16 at 28 [50] per Besanko J. These provisions are to be read against the patent regime established under the Patents Act, including the definitions of ‘novelty’ and ‘inventive step’ in s 7, and the related definitions of ‘prior art base’ and ‘prior art information’ in the Dictionary in Sch 1.
Where the Commissioner reports adversely on a complete specification, the applicant or patentee may, within 2 months from the day when the Commissioner reports under s 98, file a statement disputing the whole or any part of the report, whether or not the applicant or patentee also takes steps to amend the complete specification or files a statement of amendments in accordance with a direction of the Commissioner: see s 99. Where the re-examination was directed under s 97(3), a copy of the report under s 98 and any statement filed under s 99 must be given to the court that gave the direction: see s 100. The Commissioner cannot revoke a patent under s 101 where (as would be the case here) relevant proceedings in relation to the patent are pending: see s 101(3). As Besanko J said in Termite Tite at 28 [51], the Commissioner in this circumstance can only provide a report under s 100, which may be of assistance to the parties, but ultimately “it is up to the court to determine the validity issue on the evidence before it and the commissioner’s report does not in any way bind the court”. Where re-examination has occurred pursuant to s 97(3), the parties to the proceeding have no right of appeal to the Court from the report of the Commissioner on the re-examination.
THE PARTIES’ SUBMISSIONS
In written submissions, B.M.W. Plastics submitted that the Court should order re-examination because the matters in issue were appropriate to be determined by the expertise of the Patents Office and determination of these issues was likely to avoid expense. According to B.M.W. Plastics, resolution of the cross-claim would require: (1) the interpretation of the claims of the patent in suit to determine their scope; (2) the interpretation of the disclosure in a US patent known as the Hancock et al patent; (3) consequential on (1) & (2), determination of the novelty of claims; (4) determination of the content of the “common general knowledge”; and (5) consequential on (1), (2) & (4), determination of the inventiveness of the claims.
B.M.W. Plastics argued that the interpretation of the patent in suit and the Hancock et al patent would require expertise in the relevant technological art, which the Commissioner (but not a judge) might be said to have. B.M.W. Plastics submitted that the Commissioner might exercise this technical skill without the need for evidence from expert witnesses, and that re-examination before the Commissioner was conducive to economy.
At the hearing today, B.M.W. Plastics reiterated that the Hancock et al patent was the primary piece of documentation relied on for lack of novelty and inventive step. It proffered an undertaking that it would not, in effect, challenge the Commissioner’s report if unsuccessful. It sought an undertaking in similar terms from VIP Plastic.
VIP Plastic declined to give the undertaking sought and opposed re-examination by the Commissioner. In written submissions, VIP Plastic argued that this report could be no more than “an advisory opinion of limited forensic value and, even if relied upon by the Court, would not preclude or obviate the need for evidence on the issues of novelty or inventiveness”. VIP Plastic argued that the report would not result in any reduction of expense or avoidance of litigation. In written submissions, VIP Plastic submitted that re-examination by the Commissioner would not relieve the Court of the task of deciding the questions of novelty and lack of inventive step for itself, assisted by expert evidence tested in the usual way. VIP Plastic went on to say that it did not anticipate that this would be a “particularly lengthy or involved matter” and would involve 3 or 4 witnesses. Some would give evidence about the development of the invention and others, expert evidence about the field of invention, the common general knowledge and the place of the Hancock et al patent, and brief evidence touching interpretation. VIP Plastic anticipated a trial of a couple of days.
VIP Plastic submitted that the Commissioner’s report on re-examination would be likely to raise further issues for debate and resolution. Moreover, the Commissioner’s report would not be apt to resolve the remaining claims of invalidity and infringement.
CONSIDERATION
I agree with the applicant/cross-respondent that Termite Tite does not support the view that a report after re-examination necessarily provides litigation economies: see Termite Tite 74 IPR at 27-28 [50]-[51].
I doubt that the provision of a report by the Commissioner after re-examination would reduce the cost of this proceeding and expedite its determination. First, the Commissioner’s report after re-examination is not binding on the Court. In the absence of an undertaking of the kind sought by B.M.W. Plastics from VIP Plastic, the provision of a report under s 100 will not necessarily relieve the Court of the task of deciding the issues of novelty and lack of inventive step by reference to the admissible evidence. If the Commissioner’s report were unfavourable to VIP Plastic, it would desire to put on evidence and dispute the report. There may be additional issues for the Court to determine if it receives such a report. Further, both parties said that, regardless of the lack of novelty and inventive step grounds, there will be a need for evidence, including expert evidence, to be adduced before the Court on various other issues. In the circumstances, I am not persuaded that re-examination by the Commissioner would be most expeditious or reduce costs.
Moreover, it does not seem that the anticipated trial will be a particularly lengthy or complex one.
In these circumstances, I decline to make the order sought by B.M.W. Plastics. I would order that B.M.W. Plastics pay the costs of the motion.
I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny. Associate:
Dated: 2 June 2009
Counsel for the Applicant/Cross Respondent: Mr S Minahan Solicitor for the Applicant/Cross Respondent: Davies Collison Cave Counsel for the Respondent/Cross-Claimant: Mr A J Evans Solicitor for the Respondent/Cross-Claimant: F R Monotti & Co
Date of Hearing: 2 June 2009 Date of Judgment: 2 June 2009
1
2
0