Vision Systems Limited v Airsense Technology Limited
[2005] APO 18
•8 April 2005
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 689484 in the name of AIRSENSE TECHNOLOGY LIMITED
Title: Smoke Detection System
Action: Costs in respect to opposition under Section 59 of the Patents Act by VISION SYSTEMS LIMITED
Decision: Issued 08 April 2005.
Abstract
Both parties were given the opportunity to file submissions on costs after the issue of the substantive decision.
Those submissions have now been filed.
It has been concluded that each party should bear its own costs.
No award of costs was made.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 689484 by AIRSENSE TECHNOLOGY LIMITED, and costs in respect to opposition thereto, under Section 59, by VISION SYSTEMS LIMITED.
BACKGROUND
In a decision dated 2 March 2005, [2005] APO 7, I allowed the parties time to make submissions on costs. Both parties have now each filed written submissions.
SUBMISSIONS
Vision Systems Limited (“Vision Systems”) stated that costs generally follow the event. Vision Systems noted though that being unsuccessful on an issue in a proceeding does not automatically lead to costs being awarded to the party successful on that issue. So long as the successful ground of opposition was a substantial objection, costs are awarded against the applicant.
Vision Systems stated it was successful on a substantial ground of opposition, that is, lack of inventive step. Furthermore none of the claims of the application have been allowed. Vision Systems indicated this justifies an award of costs against the applicant relating to the whole opposition.
Vision Systems also stated it was successful in causing the applicant to substantially amend the specification as a result of the opposition. Irrespective of other outcomes, Vision Systems submitted it is entitled to costs up to and including the date of advertisement of allowance of the amendment.
AirSense Technology Limited (“AirSense”) stated the awarding of costs is a discretionary matter citing twelve general principles from Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company, (1996) 33 IPR 461. AirSense noted the opponent filed only a small proportion of evidence on the points on which it was successful, that is, inventive step and the priority date of claim 5. Significant cost was incurred on the points on which the opponent was unsuccessful, namely entitlement which the opponent pressed by requiring witnesses for cross-examination, and novelty for which the opponent raised almost 100 documents and acts of alleged prior publication and use, respectively.
Applying the principles from Patent Gesellschaft (supra), AirSense submitted the opponent continued to press and unreasonably protract the opposition on several major matters on which it failed, namely novelty, entitlement and manner of manufacture. AirSense submitted it would be very unfair (my emphasis) for a costs decision to be either:
1. All or a majority of the opponents (sic) cost should be paid by the applicant; or
2. That each party should pay their own costs.
DISCUSSION
I note AirSense amended the claims of the specification during the opposition. Mr Peter Fox, a co-inventor and a witness at the hearing, acknowledged under cross-examination that a reason for the amendment was to avoid the prior art cited in the opposition and avoid any possibility of the amended claims being interpreted to encompass the prior art. This would appear to be strong acceptance from AirSense that Vision System’s opposition played a significant part in forcing the amendment. Despite the amendment, I found three claims still to be significantly flawed. Two of those claims were flawed for lack of inventive step. The third for lack of fair basis and clarity, affecting the priority date of the claim. In the light of the above, there would appear to be a strong basis for awarding costs against AirSense.
I accept though that there was voluminous evidence filed by Vision Systems on entitlement and novelty. These were two issues on which Vision Systems was unsuccessful.
On entitlement it may be argued there was improper or unreasonable pursuit by Vision Systems. See Patent Gesellschaft (supra) at the paragraph bridging pages 463 and 464. On the other hand I think AirSense has over-stated the position. It seems that Vision Systems believed it had a genuine case on entitlement. I did not detect at any time at the hearing or in the evidence that Vision Systems was being frivolous. It is also worth noting the previous working relationships of the inventors with Vision Systems’ predecessor subsidiary. See the substantive decision, [2005] APO 7. Again referring to pages 463 and 464 of Patent Gesellschaft (supra), I regard it as neither improper nor unreasonable that Vision Systems wished to test the entitlement issue.
Entitlement was a major component of the whole opposition and largely separate from the other grounds of opposition. I regard entitlement to have been a substantial ground of opposition in this case. In the outcome, Vision Systems lost on the entitlement issue. This would appear to be a strong basis for awarding costs against Vision Systems.
On novelty I accept there was an extraordinary amount of evidence from Vision Systems. Only seven items were chiefly relied upon and found not to invalidate the claims for want of novelty. It may be argued this should significantly count against Vision Systems. On the other hand, some of these items were determinative for lack of inventive step, on which Vision Systems was successful.
DECISION
The cost issue appears to be finely balanced. I conclude each party should bear its own costs. I make no award of costs.
M. G. Kraefft
Delegate of the Commissioner of Patents08 April 2005
Patent attorneys for the applicant : Lesicar Perrin, Adelaide
Solicitors for the opponent: : Blake Dawson Waldron, Melbourne
Patent attorneys for the opponent : Davies Collison Cave, Melbourne
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