W.R. GRACE & Co.-conn v ASAHI Kasei Kogyo Kabushiki Kaisha

[1996] APO 11

official notice

decision of a delegate of the commissioner of patents

Applications  :          Nos. 624994 and 625497 in the name of ASAHI KASEI KOGYO KABUSHIKI KAISHA.

Titles:          A PHOTOSENSITIVE RESIN COMPOSITION FOR USE IN FORMING A RELIEF STRUCTURE and A PHOTOSENSITIVE RESIN COMPOSITION FOR PRODUCING A RELIEF PRINTING PLATE.

Actions: Oppositions under section 59 of the Patents Act 1952 by W.R. GRACE & CO.-CONN.; applications to serve further evidence under Regulation 5.10(4).

Decision:          Issued             .

Abstract:          Extra documents included in amended statements and served in evidence-in-reply; to apply procedural fairness should not insist all criteria be met; service of further evidence allowed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:AISHA, oppositions under Section 59 of the Patents Act 1952 by W.R. GRACE & CO.- Patent Application Nos.625497 and 624994 by ASAHI KASEI KOGYO KABUSHIKI KCONN. and an application to serve further evidence under Regulation 5.10(4) in each opposition by ASAHI KASEI KOGYO KABUSHIKI KAISHA.

background.

Both applications nos.625497 and 624994 were filed before, but advertised accepted after, the 1990 Act commenced.  Therefore the provisions of chapter 5 of this Act apply to the procedures in the present oppositions.

W.R. GRACE & CO.-CONN (GRACE) filed a notice of opposition to the grant of a patent on application no.625497 by ASAHI KASEI KOGYO KABUSHIKI KAISHA (ASAHI).  The statement of grounds and particulars served by GRACE has been amended several times without objection by ASAHI.

ASAHI requested amendment of the specification under section 104 and this request was allowed after it served its evidence-in-answer.  ASAHI's evidence-in-answer referred to the amended claims rather than the claims in the accepted specification.  Consequently GRACE requested amendment of the statement and ASAHI objected to this proposed amendment.  The amendment to the statement was allowed in a decision issued on 13 December 1994.

GRACE completed service of its evidence-in-reply on 30 January 1995. A notice dated 31 May 1995 set the hearing of the section 59 opposition for 9 August 1995.

ASAHI filed an application under regulation 5.10(4) on 27 July 1995 and GRACE objected to this application on 2 August 1995. Both parties agreed the matter of the further evidence and not the section 59 opposition should be heard on 9 August 1995. They also agreed the hearing should consider an application under regulation 5.10(4) filed in relation to application no.624994.

The background to the application under regulation 5.10(4) filed in relation to application no.624994 is similar to that for application no.625497.

A notice dated 3 August 1995 set a hearing date of 9 August 1995, referred to both applications nos.625497 and 624994 but did not refer to the subject of the hearing.  I heard the matters in Melbourne where ASAHI was represented by Mr Louis Gebhardt, patent attorney of Watermark, Melbourne.  And GRACE was represented by Mr Raymond Evans, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne.

Both parties agreed to waive any requirement for the statutory 10 days notice of the subject of the hearing.

SUBMISSIONS.

I will discuss any representations and written or oral submissions made by ASAHI and GRACE at appropriate places in the decision.

DECISION ON APPLICATION NO.625497.

The application under regulation 5.10(4) states the nature of the further evidence and the grounds for making it are set out in an accompanying declaration.  The accompanying declaration is made by Mr Gebhart and is dated 27 July 1995.  According to Mr Gebhart's declaration the nature of the further evidence is as follows:

1. A statutory declaration in the name of DAVID HENRY
   SOLOMON, and
2. A declaration in the name of MASAHIKO TAKAHASHI.

Mr Gebhardt states the evidence-in-reply includes new evidence that GRACE did not include in its evidence-in-support and he refers to page 2a, paragraph(w) of the statement.  According to Mr Gebhardt the above declarations will respond to the new evidence.

Page 2a, paragraph(w) of the amended statement reads as follows:

"Berner et al "Recent Developments in Photoinitiators" J.Oil.Col.Chem.Assoc., 1978, 61, 105-113."

I note this is the extra document that the delegate allowed GRACE to include in its amended statement.  Dr Garnett included a copy of this document as exhibit JLG-4 to his declaration-in-reply.  Therefore GRACE’s opposition may rely on this document to the extent made out in the evidence-in-reply.

I will consider whether ASAHI’s application meets the criteria set out in Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (27 IPR 421 at pages 426 and 428). This is the first decision which considers an application to serve further evidence under the 1990 Act. I note the criteria used in this decision are derived from those used in similar decisions under the 1952 Act.

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.

Mr Gebhardt said a decision issued on 3 January 1995 allowed GRACE to rely on an extra prior art document.  He argued this was new evidence when GRACE served it as part of the evidence-in-reply.  Mr Evans said his statutory declaration filed in support of the amendment of the statement included a copy of the extra document.  He argued the nature of ASAHI's submissions at the hearing on the amendment to the statement suggested it had analysed the document before the date of that hearing.

Mr Gebhardt said ASAHI could not know exactly how GRACE would rely on the document until it served its evidence-in-reply.  And he referred me to Dr Garnett's extensive comments on exhibit JLG-4 in his declaration-in-reply.

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. Thus ASAHI did not know the extra document may be part of GRACE’s opposition until the delegate issued the decision which allowed amendment of the statement. Even then ASAHI did not know whether GRACE would serve the extra document in its evidence-in-reply.

Therefore I think the earliest reasonable opportunity for ASAHI to respond to the extra document was soon after GRACE served its evidence-in-reply.  Consequently I consider ASAHI could not have obtained this further evidence with reasonable diligence at an earlier stage of the opposition.

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.

Mr Evans said the application to serve further evidence gives no details of the nature of the evidence or why it is important.  Mr Gebhardt argued the extra document may be more relevant to the amended claims than some of the documents served in the evidence-in-support.  Therefore he said ASAHI's response to this document would have an important bearing on the result of the case.

I note the filed copy of exhibit JLG-4 is incomplete as pages 107, 109,111 and 113 are missing.  I also note Dr Garnett's declaration is the only one which discusses the disclosures in JLG-4.

Dr Garnett's declaration-in-reply refers to some of the missing pages (for example pages 111 and 113).  But in my view the significant part of his argument involves page 112 which is present in the copy of the document filed by GRACE.

Both parties must know the relevant technical knowledge in the present opposition is that of the skilled person in Australia (Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 34 ALR 213 at page 227). I conclude from Dr Garnett's declaration-in-support that he has experience in Australia in what seems to be the relevant art. This means he may be able to explain what is the common general knowledge in the art in Australia in relation to JLG-4.

In my opinion what Dr Garnett says about JLG-4 may have an important bearing on the result of the case.  Therefore I consider ASAHI's response about what is the common general knowledge in the art in Australia in relation to JLG-4 may have an important bearing on the result of the opposition.

Mr Gebhardt did not explain why Masahiko Takahashi and Professor Solomon are the most relevant people to give evidence about what is the common general knowledge in the art in Australia in relation to JLG-4.  Neither did he give any details about the content of their further evidence.  Mr Gebhardt’s declaration does however state these declarations will respond to the extra document.

I conclude from Professor Solomon's declaration-in-answer that he has experience in Australia in what seems to be the relevant art.  Therefore he may be able to explain what is the common general knowledge in the art in Australia in relation to JLG-4.  Consequently the proposed declaration by Professor Solomon about JLG-4 may have an important bearing on the result of the opposition.

Masahiko Takahashi is named as a coinventor in the present application.  I consider Masahiko Takahashi's declaration-in-answer does not establish why the declarant is in a position to know what is the common general knowledge in the relevant art in Australia.  Therefore he may not be able to explain what is the common general knowledge in the art in Australia in relation to JLG-4.  Consequently I conclude the proposed declaration made by Masahiko Takahashi may not have an important bearing on the result of the opposition.

Mr Gebhardt submitted ASAHI had a natural right to be able to respond to the additional evidence in GRACE’s evidence-in-reply.  I think Mr Gebhardt meant I will deny his client procedural fairness (Kioa v West (1985) 159 CLR 550 at page 584) if I do not allow it to serve further evidence.

A delegate of the Commissioner allowed GRACE to include an extra document in its statement of grounds and particulars.  It then served this document in the evidence-in-reply.  Regulation 5.10(4) gives ASAHI an opportunity to answer the aspects of the opposition which is based on this extra document.

According to Burchett, J (Ferocem v The Commissioner of Patents (1994) AIPC 91-057 at page 38,207) I cannot reduce the broad discretion in regulation 5.10(4) by insisting on imperative compliance with the criteria in Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (supra).  Therefore before exercising the discretion I should consider whether to insist that ASAHI’s application meet this or any other of the criteria.

To apply procedural fairness to ASAHI I cannot insist it takes best advantage of regulation 5.10(4) (Sullivan v Department of Transport 20 ALR 323 at page 343). I also note ASAHI would not have been prevented from serving this declaration in its evidence-in-answer if the extra document was part of the evidence-in support.

I conclude to apply procedural fairness to ASAHI it is not necessary for the proposed declaration by Masahiko Takahashi to have an important influence on the result of the opposition.  Therefore I will not insist ASAHI’s application meet the second criterion.

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 have no reason to believe both Professor Solomon and Masahiko Takahashi would not be truthful in their proposed declarations.  Therefore I consider the proposed further evidence is presumably to be believed and apparently credible, though not necessarily incontrovertible.

The fourth criterion is whether allowing service of the evidence would cause unnecessary protraction of the opposition.  The application to serve further evidence was made about six months after GRACE served its evidence-in-reply.  According to the decision which allowed amendment of the statement ASAHI sought the right to respond if the delegate allowed the amendment to include the extra document.  In this decision the delegate states as follows:

"....if there is a need for the applicant to respond, it would be better if the response was dealt with under regulation 5.10(4) after the evidence-in-reply has been served and the applicant has a better appreciation of any need, which may or may not arise, to adduce further evidence."

Consequently I am surprised ASAHI did not file an application to serve further evidence soon after the evidence-in-reply was served on 30 January 1995.  I think GRACE may not have objected to the application if it had been filed earlier than it was.

Mr Gebhardt said ASAHI originally intended to file the application with the further evidence itself but he did not explain why it needed to do this.  In any case ASAHI did not file the application with the further evidence itself when it filed its application on 27 July 1995.

Mr Gebhardt pointed out he had been on long service leave in May and June 1995.  It seems to me a hearing, if necessary, would have been held before Mr Gebhardt went on leave if ASAHI filed its application to serve further evidence soon after the evidence-in-reply was served.

On 20 April 1995 the parties were asked to find a suitable date in June for hearing the section 59 opposition. On 21 April 1995 ASAHI replied by pointing out it was planning for a hearing during August 1995 because it was preparing evidence with a view to applying for "special leave to adduce additional evidence". It seems the further evidence itself had not been prepared.

In my view this was another early opportunity for ASAHI to file its application under regulation 5.10(4).  But Mr Gebhardt may not have been available to appear at any hearing if GRACE objected to this application.  Mr Evans argued ASAHI's attorneys were a large enough firm to give someone else responsibility for the case when Mr Gebhardt was on leave.  Mr Gebhardt argued the complexity of the present opposition meant the work could not easily be given to another person.

Mr Gebhardt intended to take leave for about 2 months.  Thus he must have made some arrangements for other attorneys from the firm to handle some of his responsibilities in his absence.

I consider the technology in the evidence in the present opposition is not simple.  But I do not consider the technology is so complex it could not be understood by another attorney with a tertiary qualification in organic chemistry.  I understand Mr Gebhardt is not the only attorney in the firm with such a tertiary qualification.

The case argued on behalf of ASAHI at the present hearing did not depend to a large extent on an intimate knowledge and understanding of the technology or the evidence.  Its case depended on a knowledge and understanding of the requirements to serve further evidence.  I presume Mr Gebhardt is not the only patent attorney in the firm who has such knowledge and understanding.
I consider it would have been appropriate for Mr Gebhardt to ask another attorney to appear at any hearing of an opposed application under regulation 5.10(4) whilst he was on leave.

I conclude the application under regulation 5.10(4) may have been finalised earlier if ASAHI had filed the application before or during Mr Gebhardt’s leave.

It seems ASAHI’s intention to file the application along with the further evidence may have delayed the filing of the application.  Mr Evans argued a period of six months was unreasonable to prepare further evidence in response to a single document.  Mr Gebhardt said the difficulty of translating documents to and from Japanese delayed preparation of the evidence.

Mr Gebhardt did not say the translation difficulties experienced in the preparation of the further evidence were different to those experienced in the preparation of its evidence-in-answer.  Therefore it seems to me these difficulties must be similar to those it previously experienced.  ASAHI had to consider and prepare a response to the 29 documents served in the evidence-in-support.  ASAHI served its evidence-in-answer a mere 5 months after the evidence-in-support was filed.

Therefore I do not consider the difficulty of translating documents to and from Japanese explains the delay in finalising the further evidence itself.

Mr Gebhardt did not explain when ASAHI started to prepare its further evidence but it is clear the process had started by 20 April 1995.  It is also clear the evidence had not been finalised by 20 July 1995.

I think it may have been inappropriate for Mr Gebhardt to ask another attorney to finalise the further evidence.  But I think another attorney could have reviewed the evidence in draft form so it could be quickly finalised when Mr Gebhardt returned from leave.  Mr Gebhardt did not explain what effort went onto preparing the further evidence in his absence.

ASAHI filed the application to serve further evidence about six months after the evidence-in-reply was served.  This delay is longer than the three month delay in Chemical Industries v Mitsubishi Gas Chemical Co. (29 IPR 285 at page 292) wherein the applicant was allowed to serve further evidence.

One reason for not unnecessarily protracting the opposition is the public interest in the patent system operating efficiently and without unreasonable delays (Vangedal-Neilsen v Smith (Commissioner of Patents 33 ALR 144 at page 150).

Against this I have to balance the public interest in having the fullest possible evidence before the Commissioner when the opposition is decided.  As well I also have to be aware that I may not apply procedural fairness to ASAHI if I refuse the application.  On balance I consider the public interest in having the fullest possible evidence and the need to apply procedural fairness outweighs the present protraction of the opposition proceedings.  Therefore I will not insist ASAHI’s application meet the fourth criterion.

The final criterion is whether allowing the service of further evidence will cause injustice to the other party.  Mr Gebhardt argued GRACE should not be given an opportunity to respond as ASAHI was merely responding to new evidence.

Mr Evans said the earlier decision had recognised the need to amend the statement arose from the amendments to the claims.  He argued this meant ASAHI had effectively restarted the opposition and the further evidence was in effect more evidence-in-answer.  I agree with this argument.
Mr Evans submitted GRACE would be prejudiced if it did not have an opportunity to reply to this evidence.  I consider there will be no injustice to GRACE if I allow it an opportunity to respond to the further evidence if I allow the application.

Therefore I allow ASAHI to serve the proposed declarations by Masahiko Takahashi and Professor Solomon as further evidence. in the opposition to application no.625497.

Mr Gebhardt said the declarations could be served within one month of the date of the hearing.  Therefore I think it is appropriate to allow ASAHI one month from of the date of this decision to serve and file the proposed declarations by Masahiko Takahashi and Professor Solomon.

Mr Evans argued GRACE should have more than one month to respond to the further evidence because ASAHI had taken more than this to prepare it.  I do not know whether the proposed declarations by Masahiko Takahashi and Professor Solomon will be extensive.  But I presume they will not be too extensive as they are only in response to evidence about one extra document.  Therefore I allow GRACE one month from the date of service to serve and file evidence-in-reply to the proposed declarations by Masahiko Takahashi and Professor Solomon.  If this does not allow GRACE sufficient time to respond I may give a direction to extend this time if it satisfies me why this is necessary.

DECISION ON APPLICATION NO.624994.

The application under regulation 5.10(4) states the nature of the further evidence and the grounds for making it are set out in an accompanying declaration.  The accompanying declaration is made by Mr Gebhardt but in its heading it refers to application no.625497.

According to Mr Gebhart's declaration the nature of the further evidence is as follows:

1. A statutory declaration in the name of DAVID HENRY
   SOLOMON,
2. A declaration in the name of GENSHO TAKAHASHI.

At the hearing GRACE did not object to the application because of the wrong heading in the statutory declaration.

Gensho Takahashi is named as one of the inventors of application no.624994 but is not named as one of the inventors of application no.625497.  Therefore I think it is clear from the declaration itself that Mr Gebhardt intended this declaration to support an application for further evidence in respect of application no.624994.  I will treat this document as a statement in support of an application under regulation 5.10(4) in relation to application no.624994.

Mr Gebhardt states the evidence-in-reply includes new evidence that GRACE did not include in its evidence-in-support and he refers to page 2, paragraphs(d), (k) and (l) of the statement.  According to Mr Gebhardt the above declarations will respond to the new evidence.

Page 2, paragraphs(d), (k) and (l) of the statement read as follows:

(d) Australian specifications.......and 47442/72.

(k)...and/or "Berner et al "Recent Developments in Photoinitiators" J.Oil.Col.Chem.Assoc., 1978, 61, 105-113."
(l)(i) Guan Jie Jiang, Yasuhiko Shirota and Hiroshi Mikawa " Photopolymerization of the N,N-Dialkylaminoethyl methacrylate Benzophenone System", Polymer Photochemistry, 7, (1986) 311-317.

(ii) Charles E. Hoyle, Melissa Granford, Martin Trapp, Young Gil No and Kya-Jun Kim "Photpolymerization of 1,6-hexanediol diacrylate with deoxybenzoin as photoinitiator” Polymer, 1988 29 (November) 2033.
   (iii) Charles E. Hoyle, Monty Keel and Kya-Jun Kim " Photopolymerization of 1,6-hexanediol diacrylate: the effect of functionalised amines" Polymer 1988, 29 (January), 18.

I note these are the extra documents that the delegate allowed GRACE to include in its amended statement.  Dr Garnett included copies of these documents as exhibits JLG-21 to 24 and 26 to his declaration-in-reply.  Therefore GRACE’s opposition may rely on these documents to the extent made out in the evidence-in-reply.

Mr Gebhardt did not explain why Gensho Takahashi is a relevant person to respond to the disclosures in exhibits JLG-21 to 24 and 26.  Neither did he give any details about the content of their further evidence.  Mr Gebhardt’s declaration does however state these declarations will respond to the extra document.

After analysing the present application using the approach I used above I allow ASAHI to serve the proposed declarations by Gensho Takahashi and Professor Solomon as further evidence in the opposition to application no.624994.

I allow ASAHI one month from the date of this decision to serve and file the proposed declarations by Gensho Takahashi and Professor Solomon.  And I allow GRACE one month from the date of service to serve and file evidence-in-reply to these declarations.  If this does not allow GRACE sufficient time to respond I may give a direction to extend this time if it satisfies me why it is necessary.

COSTS.

Both attorneys submitted costs should follow the event.  Mr Evans also submitted costs should be awarded against ASAHI even if I allowed both applications to serve further evidence.  He said the applications should have fully explained the reasons for the delay in making the applications.
I consider it was reasonable of GRACE to object when the applications did not explain the delay in filing them.  But Mr Evans did not say his client would not have objected if the applications had fully explained the reasons for the delay.  In any case my decision to allow ASAHI to serve further evidence did not depend on an explanation of the delay.  I consider the success of the applications did not depend on statements made in them or the accompanying declaration or statement.  Therefore I think it is appropriate not to award costs against either party.

SUMMARY.

I allowed ASAHI to serve the proposed declarations by Masahiko Takahashi and Professor Solomon in the opposition to its application no.625497.  I also allowed ASAHI to serve the proposed declarations by Gensho Takahashi and Professor Solomon in the opposition to its application no.624994.

In both oppositions I allowed ASAHI one month from the date of this decision to serve the proposed declarations.  And I allowed GRACE one month from the date of service of these declarations to serve evidence in reply to these declarations.  I made no award of costs.

M Kendall

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :Watermark Patent & Trademark Attorneys, Melbourne

Patent attorneys for the opponent   : Phillips Ormonde & Fitzpatrick, Melbourne