VISKASE Corporation v W.R.GRACE & Co.-conn

[1995] APO 69

official notice

decision of a delegate of the commissioner of patents

Application  :          No.611601 in the name of VISKASE CORPORATION

Title:          "Irradiated Multilayer Film for Primal Meat Packaging"

Action:          Two requests to amend the statement of grounds and particulars under regulation 5.9 by W.R.GRACE & CO.-CONN.; and an application by VISKASE under regulation 5.10(4) to serve further evidence.

Decision:          Issued

Abstract:          Documents to be included in the statement were mentioned in the evidence-in-support; both requests filed after evidence-in-reply served; requests were not filed at the earliest reasonable opportunity; both requests refused; opportunity to file amended statement which refers to documents discussed in evidence-in-answer; further evidence to establish declarant's ability to state what skilled person in the art in Australia knows; evidence could have been obtained with reasonable diligence at an earlier stage; evidence will not have an important bearing on the result of the case; application refused; no award of costs.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.611601 by VISKASE CORPORATION and an opposition under section 59 of the Patents Act 1952 by W.R.GRACE & CO.-CONN.; two requests to amend the statement of grounds and particulars under regulation 5.9 and an application by VISKASE under regulation 5.10(4) to serve further evidence.

background.

Application no.611601 by VISKASE CORPORATION (VISKASE) is entitled "Irradiated Multilayer Film for Primal Meat Packaging". The application was filed on 8 December 1989 and was advertised accepted on 13 June 1991. W. R GRACE & CO.-CONN. (GRACE) filed a notice of opposition on 13 September 1991. Therefore the procedures of the Patents Act 1990 apply to this opposition (regulation 23.3).

GRACE served its statement of grounds and particulars and then filed an amended statement on 17 October 1991.  VISKASE did not object to this amendment of the statement.  The evidence stages, including applications for extension of time, proceeded until VISKASE had filed its evidence-in-answer.

GRACE applied for an extension of time to serve its evidence-in-reply.  VISKASE objected to the extension but GRACE completed service of this evidence outside the time allowed.

On 18 and 21 November 1994 GRACE filed applications to amend its statement of grounds and particulars.  VISKASE objected to both of these proposed amendments and then withdrew its objection to the extension of time.  The Commissioner extended the time to serve the evidence-in-reply which means it was served on 18 November 1994

The parties agreed the section 59 opposition and the applications to amend the statement of grounds and particulars should be heard together. Consequently the Commissioner informed the parties on 30 May 1995 there would be a hearing on 7 and 8 August 1995.

On 26 June 1995 VISKASE filed a request to serve further evidence and on 10 July 1995 the Commissioner allowed GRACE 21 days to make representations on this matter. GRACE then requested deferral of the hearing of the section 59 opposition and VISKASE requested postponement of this hearing.
The Commissioner deferred the hearing of the section 59 opposition in a letter to the parties dated 1 August 1995. This letter also states the requests to amend the statement and the application to serve further evidence would be heard on 8 or 9 August 1995.

I heard the matter in Melbourne on 8 August 1995 and Ms L. Stafford, patent attorney of Watermark, represented VISKASE.  GRACE was represented by Mr M.Angliss, patent attorney of Davies Collison Cave, who was assisted by Mr R Heisey of that firm.

Both parties agreed to waive the statutory ten days notice of the hearing as their clients only knew the subject of the hearing on 1 August 1995.

REQUESTS TO AMEND THE STATEMENT OF GROUNDS AND PARTICULARS.

SUBMISSIONS.

Ms Stafford and Mr Angliss made oral submissions on the requests to amend the statement of grounds and particulars.  Both attorneys also provided a written summary of their submissions.  I will discuss these at appropriate places in the decision.

THE REQUESTS.

The letter dated 18 November 1994 which requested amendment of the statement of grounds and particulars states as follows:

"The amendments to the Statement of Grounds and Particulars are to include prior art which was referred to in the evidence-in-support.  The applicants have been aware of the prior art since the evidence-in-support was lodged and have provided evidence-in-answer in relation to the prior art which has now been included into the Statement of Grounds and Particulars."

The proposed amendment adds 17 documents to those mentioned in particular 1 of the statement filed on 17 October 1991.  This particular supports the grounds of prior publication (ground 1), obviousness (ground 3) and otherwise not novel (ground 4).

The amendment proposed in the letter dated 22 November 1994 adds 18 documents to those listed in particular 1 of the statement filed on 17 October 1991.

DECISION ON THE REQUESTS.

According to regulation 5.9(1)(c) I must amend particulars relating to a ground referred to in the statement if the amendment meets the requirements of regulation 5.9(2).  I consider the only requirement of regulation 5.9(2) which may not be met is that of paragraph (e).  Thus I have to consider whether I reasonably believe a person will be unduly prejudiced by the proposed amendments.

1. Request dated 18 November 1994.

Mr Angliss said the documents included in the statement by this request arose incidental to the preparation of GRACE's case.  He offered to provide evidence of draft declarations to show this if necessary.  Ms Stafford argued the documents did not arise incidental to the preparation of GRACE's case.  She said the documents arose because GRACE was trying to find a better basis for its opposition.

I will assume the documents proposed to be included by the request dated 18 November 1994 arose incidental to the preparation of GRACE's case.

According to the decision in Diamond Scientific Company v CSL Limited ((1992) AIPC 90-927) documents which arise incidental to the preparation of the opponent's case will not prima facie unduly prejudice the applicant if:

i. they do not result in any protraction of the preparation of the case;

ii. are included by way of amendment of the statement at the earliest reasonable opportunity; and

iii. do not substantially change the case the applicant has to answer.

Mr Angliss pointed out the Commissioner allowed the request in Ball Corporation v American Can Company (unreported decision of the Commissioner on application no.6444856 issued on 9 January 1995).  In his opinion this request was similar to the present request.

In Ball Corporation v American Can Company (supra) the opponent requested amendment of its statement when it served its evidence-in-support.  In the present situation GRACE filed the application to amend the statement at about the same time as it served its evidence-in-reply.  In my view this distinguishes the present situation from that in this decision.

In Stevelift Pty Ltd v Formark Pty Ltd (29 IPR 154) and Porter v Arbortech Investments Pty Ltd (31 IPR 169) the opponents requested amendment of the statement at about the same time as they served the evidence-in-reply. In these decisions
the opponents served the documents as part of the evidence-in-reply.  In the present situation GRACE served the documents as part of its evidence-in-support.  Thus the present circumstances are different to those in these decisions.

Mr Angliss said most of the documents included by the amendment were merely more examples of common general knowledge in the art.
Particular 1 in the statement filed on 17 October 1991 reads as follows:

"1.  The invention, as claimed in any one of claims 1 to 17, is disclosed in, or differs only in matters amounting to

(a) workshop variations;
      (b) mechanical equivalents;
      (c) variations making no substantial
          contribution to the invention or
          involving no inventive step and
           contributing no merit to the invention;

from the following patent specifications ......

(then follows a list of patent specifications related to claims 1 to 17 and list of patent specifications related to claims 11 to 14)".

Particular 3 states the claimed invention is obvious and does not involve an inventive step.  It refers to  the widespread knowledge of the irradiation of multilaminate shrink wrap films in the literature including the patent specifications recited in particular 1.

Particular 4, which involves claims 1 to 17 being otherwise not novel, also refers to the films and processes for making them described in particular 3.

In my view GRACE will be able to rely on all the documents it proposes to include in particular 1 as, for example, novelty citations.  In this case the request may not amend the statement in the way which Mr Angliss intended.

Particular 1 in the proposed amended statement includes 32 patent specifications as well as two documents described in part as follows:

"Kirk-Othmer; Encyclopedia of Chemical Technology, Third Edition, Volume 23......

Ritchie A Wessling, 'Polyvinylidene Chloride',...".

I note these are books and not patent specifications as stated in the particular.

Mr Angliss observed the evidence-in-support refers to all the documents which the present amendment proposes to include in the statement.  I agree with this observation.

Mr Angliss submitted the case VISKASE had to answer was clear from the date GRACE served its evidence-in-support.  Ms Stafford pointed out VISKASE had not given thorough consideration to all the documents to which the evidence-in-support referred.  She said VISKASE had focused its attention on the documents mentioned in the statement when it prepared its evidence-in-answer.
According to Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd ((1992) 25 IPR 233 at page 239) the statement of grounds and particulars sets out the basis of the opposition. Therefore I consider VISKASE used a reasonable approach in answering the evidence-in-support.

VISKASE's evidence-in-answer sets out its answer to the evidence-in-support.  Therefore I can reasonably conclude the amendment will lead to a protraction of the preparation of the case if the evidence-in-answer fails to refer to at least one of the 17 documents first mentioned in the evidence-in-support.  In this case I also think I can reasonably conclude the amendment will change the case VISKASE has to answer.

Stanley Lustig's declaration-in-answer points out the evidence-in-support refers to 7 documents that are not mentioned in the statement.  He also says GRACE did not serve these documents.  I note these 7 documents include US patent no.4278738 which Elizabeth Eadie filed as exhibit EE-9 to her declaration-in-support dated 9 September 1992.  I also note VISKASE's attorneys accepted service of this declaration without commenting on the absence of exhibit EE-9.

Mr Lustig states the statement does not list US patents nos.4448792 and 4247584.  But Mr Lustig argues US patent no.4448792 does not disclose the present invention nor does it direct the reader to producing the film of the present application.  He also argues US patent no.4247584 does not disclose "post irradiation" of the film.  Mr Lustig states it was not a natural progression or an obvious step to post irradiate the film.

David Henry Solomon in his declaration-in-answer discusses the relevance of the disclosures in US patents nos.4448792 and 4247584 to the present claims.  He also points out US patent no.4448792 is equivalent to AU application no.14459/83.  I note this document is mentioned in the statement filed on 17 October 1991.

VISKASE chose to argue the merits of the disclosures in US patents nos.4448792 and 4247584 in its answer to the opposition.  It did this even though it was aware GRACE's statement of grounds and particulars did not list these documents.  Ms Stafford conceded VISKASE had considered US patents nos.4448792 and 4247584.  I conclude VISKASE treated these US patents as part of the opposition it had to answer.

I consider this means the request dated 18 November 1994 is not unduly prejudicial to VISKASE in so far as it refers to US patents nos.4448792 and 4247584.

The statement filed on 17 October 1991 refers to DE patent no.3241021 and this document is part of exhibit EE-13 to the declaration-in-support of Elizabeth Eadie dated 9 September 1992.  A verified translation of DE patent no.3241021 by Sabine Blase is also part of exhibit EE-13.  This translation asserts US patent no.4547433, apart from a few exceptions, is a faithful translation of DE patent no.3241021.  Professor Solomon discusses the disclosures in exhibit EE-13 and he says his comments are in relation to US patent no.4547433.

I conclude VISKASE treated US patent no.4547433 as part of the opposition it had to answer.

I consider this means the request dated 18 November 1994 is not unduly prejudicial to VISKASE in so far as it refers to US patents no.4547433.

VISKASE's evidence-in-answer fails to refer to at least one of the 17 documents first mentioned in the evidence-in-support.  Therefore I consider amendment of the statement to include the 17 documents will result in a protraction of the preparation of the case and will change the case VISKASE has to answer.

Ms Stafford pointed out GRACE had discussed all the documents it proposed to include in the statement in the evidence-in-support.  Therefore she argued GRACE must have been aware of the deficiencies in its statement when it served its evidence-in-support.  Ms Stafford submitted GRACE had not explained why it delayed proposing amendments to the statement until it served the evidence-in-reply.

Mr Angliss pointed out the present statement was filed before Imperial Chemical Industries PLC v Irenco Inc (26 IPR 154) established such stringent requirements for the statement. He said GRACE had decided to make the statement conform to the evidence after reviewing all the evidence.

The evidence-in-support discusses all the documents included by the amendment.  I do not understand why GRACE did not review the statement when it finalised this evidence.  The evidence-in-answer points out some of the documents referred to in the evidence-in-support are not mentioned in the statement.  In my view this was a clear signal to GRACE or its attorneys that the statement was deficient.  I do not understand why GRACE did not review its statement shortly after it received the evidence-in-answer.  One explanation may be GRACE reviewed the statement but delayed requesting amendment of the statement.

I consider these were early and reasonable opportunities for GRACE to request amendment of its statement.

GRACE may have reviewed the statement during preparation of its evidence-in-reply.  It may only have reviewed the statement when it finalised its evidence-in-reply.  But GRACE did not explain why it did not request amendment of the statement before it served its evidence-in-reply.  In this situation I am not satisfied GRACE requested amendment of the statement at the earliest reasonable opportunity.

I conclude the request dated 18 November 1994 is prima facie unduly prejudicial to VISKASE.  This means the onus is on GRACE to show why I should allow the request (Diamond Scientific Company v CSL Limited, supra at page 38,699).  I consider GRACE has not discharged the onus that is on it.  Consequently I refuse to allow the request to amend the statement of grounds and particulars dated 18 November 1994.

2. Request dated 22 November 1994.

I refused to allow the request to amend the statement of grounds and particulars dated 18 November 1994.  This means I have to consider the request to amend the statement dated 22 November 1994 in relation to the statement filed on 17 October 1991.

The request dated 22 November 1994 proposes to include the same 17 documents as the request dated 18 November 1994 proposed to include in particular 1.  The request dated 22 November 1994 also proposes to include AU application no.43868/72 in particular 1.

I will assume the documents which the request dated 22 November 1994 proposes to include in the statement arose incidental to the preparation of GRACE's case.

The request dated 22 November 1994 states as follows:

"The amendment to the Statement of Grounds and Particulars is to include reference to AU-A-43868/72.  This specification has been included in the evidence-in-reply to rebut allegations made by the applicants that it was not possible to biaxially stretch unirradiated film."

It seems to me GRACE may rely on AU application no.43868/72 as evidence-in-reply without including it in the statement.

According to Mr Angliss AU application no.43868/72 was not discovered until Mr.Woollard finalised his declaration-in-reply.  He pointed out this document is equivalent to UK patent no.1385196.

Ms Stafford did not concede VISKASE had considered UK patent no.1385196 in preparing its evidence-in-answer.  And, not surprisingly, VISKASE's evidence-in-answer fails to mention AU application no.43868/72.  Therefore I consider amendment of the statement to include AU application no.43868/72 will result in a protraction of the preparation of the case and will change the case VISKASE has to answer.

AU application no.43868/72 is an Australian application which is equivalent to UK patent no.1385196.  The patentee of UK patent no.1385196 and the applicant of AU application no.43868/72 is W.R. Grace & Co. with the same street address.  The UK patent states the patentee is a corporation organised and existing under the laws of the state of Connecticut.

GRACE refers to its UK patent no.1385196 in the evidence-in-support.  The request to amend the statement dated 18 November 1994 sought to include this UK patent in particular 1.  In my decision on this request I was not satisfied GRACE sought to include this document at the earliest reasonable opportunity.
It seems to me GRACE should have known of the Australian application which is equivalent to its UK patent no.1385196 when it prepared its evidence-in-support.  GRACE did not explain why it was not aware of the equivalent Australian application at this time.  In this situation I am not satisfied GRACE requested amendment of the statement to include AU application no.43868/72 at the earliest reasonable opportunity.

I conclude the inclusion of AU application no.43868/72 in the statement is prima facie unduly prejudicial to VISKASE.  This means the onus is on GRACE to show why I should allow it to include this document in the statement (Diamond Scientific Company v CSL Limited, supra at page 38,699).  I consider GRACE has not discharged the onus that is on it.

Above I refused to allow amendment of the statement to include the other 17 documents which the request dated 22 November 1994 proposes to include.  Consequently I refuse to allow the request to amend the statement of grounds and particulars dated 22 November 1994.

Ms Stafford suggested I should give a direction that the evidence involving the documents which GRACE proposed to include in the statement should not be part of the hearing of the section 59 opposition. In my view the delegate hearing the section 59 opposition may, for example, include these documents in the opposition by invoking regulation 5.11. The direction suggested by Ms Stafford would then interfere with this delegate's intention to include the documents. I consider the delegate hearing the section 59 opposition is the relevant person to determine which documents are part of the hearing of the section 59 opposition. Therefore I will not make the direction suggested by Ms Stafford.

Mr Angliss submitted if I refused to allow the requests I should give a direction that GRACE be allowed to file further and better particulars.  He conceded particular 1 may not be the best place to include the documents in the statement.

I found inclusion of some of the documents in the statement would not be unduly prejudicial to VISKASE.  Therefore I consider it is appropriate to give GRACE an opportunity to amend its statement to include these documents if it wishes.  I allow it one month from the date of this decision to file and serve such an amended statement.

APPLICATION TO FILE FURTHER EVIDENCE.

THE APPLICATION.

The application dated 22 June 1995 describes the further evidence as a declaration by Stanley Lustig dated 30 May 1995.  VISKASE filed this declaration with the application and also served it GRACE.
I will not quote the application in full as it sets out detailed arguments in support of the application and includes the factors which VISKASE thinks I should consider.  According to the application VISKASE wants to address the issue of whether or not Mr Lustig is able to comment on the art in Australia.

SUBMISSIONS.

Ms Stafford and Mr Angliss made submissions at the hearing and filed a written summary of their submissions.  Mr Angliss made representations on the application to file further evidence in a letter dated 31 July 1995.  I will consider these representations as well as the attorneys' submissions at appropriate points in the decision.

DECISION ON THE APPLICATION TO FILE FURTHER EVIDENCE.

Mr Angliss said the factors set out in VISKASE's application are based on the factors listed in the relevant part of Volume 3 of the Manual of Practice and Procedure.  He argued these factors are different to the criteria considered in Imperial Chemical Industries v Mitsubishi Gas Chemical Co. (29 IPR 285 at page 292).

The criteria used in Imperial Chemical Industries v Mitsubishi Gas Chemical Co. (supra) are based on those applied in Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (27 IPR 421 at pages 426 and 428). I note the latter decision is the first which considers an application to serve further evidence under the 1990 Act. I also note the criteria used in this decision are derived from those used in similar decisions under the 1952 Act.
I will rely on the criteria set out in the Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd decision (supra).  It seems to me the factors listed in Volume 3 of the Manual of Practice and Procedure may not accurately reflect the criteria used in earlier decisions.  In any case both Mr Angliss and Ms Stafford based their submissions on Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (supra).

The first criterion is the party making the application must show the evidence could not have been obtained with reasonable diligence at an earlier stage.

Ms Stafford argued the issue of Mr Lustig's ability to comment on the art in Australia is on all fours with the situation found in Imperial Chemical Industries v Mitsubishi Gas Chemical Co. (supra).

In this decision the evidence-in-reply questioned whether a declarant had any knowledge of chemical engineering.  In other words the evidence-in-reply questioned the declarant's actual technical knowledge.

In the evidence-in-reply Mr Woollard states:

"I would not imagine that Lustig would have any knowledge of the state of the art in Australia prior to the priority date."

I note Mr Woollard makes this statement in the context of GRACE conducting most of its research and development in the USA and VISKASE having no manufacturing facility in Australia.

It seems to me Mr Woollard is not questioning Mr Lustig's actual technical knowledge of the art.  Rather I think he is questioning if Mr Lustig is in a position to state what the skilled person in the art in Australia knows.  In this case I consider the present situation is different to that in Imperial Chemical Industries v Mitsubishi Gas Chemical Co. (supra).

I consider the difference is significant.  GRACE's and VISKASE's declarants may disagree what is the relevant art and what actual technical knowledge is relevant to application no.611601.  But both parties must know in the present opposition the relevant technical knowledge is that of the skilled person in Australia (Wellcome Foundation Ltd v VR Laboratories (AUST) Pty Ltd (1981) 34 ALR 213 at page 227).

Ms Stafford said the question of Mr Lustig's ability to comment was a new issue which was first raised in the evidence-in-reply.  She argued VISKASE filed the application to serve further evidence after it reviewed the evidence-in-reply.  Mr Angliss submitted Mr Lustig could have established his ability to comment in his evidence-in-answer.

Mr Lustig has worked for a considerable time in the USA.  I note one of GRACE's declarants has also worked for a considerable time in the USA.  Mr Lustig's declaration-in-answer questions whether the technical knowledge of this declarant is that of the relevantly skilled person in the art in Australia.

I conclude Mr Lustig was aware the relevant art and skilled person must be that in Australia.  Therefore I consider VISKASE knew when Mr Lustig made his declaration-in-answer that it should have explained why he is in a position to state what the skilled person in the art in Australia knows.  Consequently I am satisfied the further evidence could have been obtained with reasonable diligence at an earlier stage.

The second criterion is the evidence must be such that, if given, it would probably have an important bearing on the result of the case.

What Mr Lustig says about common general knowledge may have great weight if he can establish why he is in a position to state what the skilled person in the art in Australia knows.  Conversely what he says about common general knowledge may have little weight in the opposition if he cannot establish this.  Thus it may be detrimental to VISKASE's evidence on common general knowledge if Mr Lustig does not establish his ability to comment on the art.
Consequently the weight given to Mr Lustig's evidence about common general knowledge may depend on the present application to file further evidence.

Aicken,J in the High Court's judgement in Minnesota Mining & Manufacturing Co. v Beirsdorf (Australia) Ltd ((1980) 144 CLR 253 at page 292) states:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade.....and it must be treated as being used by an individual as a general body of knowledge."

Mr Lustig may show what is common general knowledge by:

- stating his personal knowledge in the art,
  and/or
- relying on the relevant kinds of documents in the
  art, and/or
- stating what he has taught students in the art.

Mr Lustig is named as one of the inventors of application no.611601.  And in his declaration-in-answer he states he is the inventor of 32 US patents.  In this case I think Mr Lustig's personal knowledge of the art is likely to be greater than the common general knowledge.  I conclude from a quick perusal of Mr Lustig's declaration-in-answer that he does not explain why he considers some of his knowledge is common general knowledge.

I note there are no exhibits attached to Mr Lustig's declaration-in-answer.  I also note he does not state what he has taught students in the art.

I consider Mr Lustig's declaration-in-answer makes little or no attempt to explain what is the common general knowledge in the art.  Therefore, but without deciding the matter, I consider what Mr Lustig says about common general knowledge in the art is unlikely to have great weight.  This weight is unlikely to change much if VISKASE establishes why he is in a position to state what the skilled person in the art in Australia knows.

I conclude the weight given to what Mr Lustig says about common general knowledge is not dependant on the present application to serve further evidence.  Therefore I consider the further evidence will make little difference to VISKASE's evidence on common general knowledge.

In Chemical Industries v Mitsubishi Gas Chemical Co. (supra) the delegate considered the issue of the declarant's expertise was important because the issue "underpins all their evidence".

GRACE's other expert witness Professor Solomon has worked in Australia for a considerable time in what seems to be a relevant art.  On the other hand Mr Lustig has worked for a considerable time in the USA in what seems to be a relevant art.  Prima facie I conclude Professor Solomon is in a better position than Mr Lustig to state what the skilled person in the art in Australia knows.  Consequently Mr Lustig's evidence-in-answer does not underpin all of VISKASE's evidence.

Therefore I am satisfied the further evidence will not have an important bearing on the result of the case.

The third criterion is whether the evidence is such as is presumably to be believed, that is it must be apparently credible, though not necessarily incontrovertible.

I consider Mr Lustig is the best person to establish why he is in a position to state why he  knows what the skilled person in the relevant art in Australia knows.  I have no reason to believe he would not be truthful in his declaration.  Therefore I consider the further evidence is apparently credible, though not necessarily incontrovertible.

The fourth criterion is whether allowing service of the evidence would cause unnecessary protraction of the opposition.  Ms Stafford pointed out VISKASE has already served the further evidence on GRACE.  Therefore she submitted allowing VISKASE to serve further evidence would not unnecessarily protract the opposition.

GRACE served the evidence-in-reply on 18 November 1994 but VISKASE did not make an application to serve further evidence until 22 June 1995. I note this date is after the date VISKASE had agreed to a date for the hearing of the section 59 opposition. I also note this delay is seven months compared to the less than three months in Chemical Industries v Mitsubishi Gas Chemical Co. (supra).  VISKASE did not explain why it took seven months to discover it needed to serve further evidence.  I consider allowing service of the evidence would cause unnecessary protraction of the opposition.

The final criterion is whether allowing the service of further evidence will cause injustice to the other party.  If I allow the application I consider there will be no injustice to GRACE as long as I also allow it an opportunity to respond to the further evidence.

I have found the application to serve further evidence does not satisfy most of the criteria from Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (supra).  Therefore I refuse VISKASE's application to serve further evidence dated 22 June 1995.

On 17 August 1995 VISKASE filed a facsimile letter which in part states as follows:

"...in our initial covering letter of June 22, 1995 to our application to serve additional evidence we indicated that the declaration by Stanley Lustig dated 30th May, 1995 completed our further evidence, we advise that this is now not the case and now enclose herewith a further supplemental declaration by Stanley Lustig dated August 11, 1995 which now completes the Applicant's further evidence.
.....A copy of the declaration has been served on the Opponent's agents today by facsimile.

....the content of the facts set out in the declaration  merely provides further qualification of the facts set out in the declaration made by Stanley Lustig on 21st December, 1993 and 30th May, 1995.

....a decision in relation to our request has not yet been determined and is not dependant upon the actual content of the evidence....in some situations where a request to serve further evidence is made, the further evidence to be served is not available

...the Opponent will not be prejudiced in anyway by this further declaration."

VISKASE filed the declaration by Stanley Lustig dated 11 August 1995 on 22 August 1995.

On 18 August 1995 GRACE filed a letter which objected to the inclusion of the declaration by Stanley Lustig dated 11 August 1995 in the application to serve further evidence.

The application dated 22 June 1995 explicitly states the declaration by Stanley Lustig dated 30 May 1995 constitutes the further evidence.  Ms Stafford did not mention the declaration by Stanley Lustig dated 11 August 1995 in her oral and written submissions at the hearing.  Therefore I consider the application to serve further evidence dated 22 June 1995 does not include the declaration by Stanley Lustig dated 11 August 1995.

VISKASE may, if it wishes, make the declaration by Stanley Lustig dated 11 August 1995 the subject of another application to serve further evidence.  It seems to me the declarations of Stanley Lustig dated 30 May and 11 August 1995 are likely to have a similar influence on the result of the present opposition.  Consequently I think the Commissioner is likely to refuse an application to serve the declaration of Stanley Lustig dated 11 August 1995 as further evidence.

GRACE's letter dated 18 August 1995 suggests I give a direction that further applications by VISKASE to serve further evidence "should not be entertained".  I consider I cannot make such a direction as this may unduly restrict VISKASE's ability to defend application no.611601.

VISKASE may make another application to serve the declaration of Stanley Lustig dated 11 August 1995 as further evidence. If GRACE objects to such an application I consider it would be appropriate to give a direction that this matter be heard together with the section 59 opposition.

GRACE's letter dated 18 August 1995 also suggests the section 59 opposition to application no.611601 should be heard as soon as practicable. I think this is a reasonable suggestion as the present hearing effectively replaced such a hearing.

COSTS.

Both VISKASE and GRACE made submissions on costs.  I refused two requests by GRACE to amend its statement of grounds and particulars.  I also refused VISKASE's application to serve further evidence.  In this situation I consider I should not award costs against either VISKASE or GRACE.  Therefore I make no award of costs against either party.

SUMMARY.

I refused two requests by GRACE to amend its statement of grounds and particulars.  But I allowed it one month from the date of this decision to file and serve an amended statement if it wishes.  I also refused VISKASE's application to serve further evidence.  I made no award of costs against either party.

M.Kendall

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Watermark, Melbourne

Patent attorneys for the opponent  :  Davies Collison Cave, Melbourne