Williams Advanced Materials, Inc v Target Technology Co., LLC - [2008] APO 25

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 765849 in the name of TARGET TECHNOLOGY CO., LLC.

Title: Metal alloys for the reflective or the semi-reflective layer of an optical storage medium.

Action: Opposition under Section 59 of the Patents Act by
WILLIAMS ADVANCED MATERIALS, INC.

Decision: Issued 17 September 2008.
Abstract

The application related to reflective or semi-reflective layers used in optical storage media (“OSM”) for reflecting laser light from the information sections of OSM for reading data. The particular examples of OSM to which the invention was applicable were compact discs (“CDs”) and digital versatile discs (“DVDs”) of read-only, recordable and re-writable type. The reflective layers were generally made of silver-based alloys. The invention pertained to OSM with reflective layers having particular alloys.
The opposition succeeded on the ground of lack of novelty. Claims 43, 44, 45, 54, 56 and 81 of the application were found not novel in the light of a Japanese patent specification.
The applicant was allowed sixty (60) days from the date of this decision to propose suitable amendments to overcome the above findings.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 765849 by TARGET TECHNOLOGY CO., LLC, and opposition thereto, under Section 59, by WILLIAMS ADVANCED MATERIALS, INC.

BACKGROUND

Target Technology Co., LLC (“Target”) filed patent application 765849 on 2 May 2001. The application claims priority from two US patent applications, the earliest of these being filed in the US on 21 July 2000. The Patent Office advertised acceptance of patent application 765849 on 2 October 2003.
Williams Advanced Materials, Inc (“Williams”) filed a notice of opposition to the grant of a patent on application 765849 on 23 December 2003. Williams subsequently filed a statement of grounds and particulars in support of the opposition on 23 March 2004.
Target and Williams completed the stages of evidence-in-support, evidence-in-answer and evidence-in-reply on 20 June 2006. During these evidentiary stages Target also requested leave to amend the specification of patent application 765849. The Patent Office advertised allowance of the amendment on 23 February 2006 and the specification was re-published in its amended form on that date.
On 21 May 2007 Williams made an application to serve further evidence on Target under Patent Regulation 5.10(4). Two statutory declarations accompanied that application. The application to serve further evidence was granted on 25 June 2007 and Target was given an initial period of three months to serve evidence in response. Target subsequently requested a few extensions of time which were granted. Target served its evidence in response on 20 February 2008.
On 16 June 2008 Williams filed a further statutory declaration. The admissibility of this evidence was dealt with at the hearing.
The hearing was held in Sydney on 18 June 2008. Dr Linda Govenlock, assisted by Ms Ruth Clarkson, both patent attorneys of Spruson & Ferguson, represented Target. Ms Angela Bowne of counsel, assisted by Mr Derek Baigent, of Mallesons Stephen…

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.

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Details

Case: [2008] APO 25
Decision Date: 17 September 2008

CaseChat Overview and Summary

The case involved a patent application by Target Technology Co., LLC, relating to metal alloys for use in the reflective or semi-reflective layers of optical storage media (OSM) such as CDs and DVDs. Williams Advanced Materials, Inc opposed the grant of a patent on the application. The opposition raised several grounds, including lack of novelty, lack of a manner of manufacture, and insufficiency in the description of the invention. The opposition was heard in Sydney on 18 June 2008, with both parties presenting expert evidence.

The court found that the invention lacked novelty as several claims were anticipated by a Japanese patent publication (JP 02-192046). The claims in question related to OSM with specific silver-based alloy compositions in their reflective layers. The Japanese document disclosed a magneto-optical recording medium with a reflective film of silver and manganese, within the range claimed by Target. The court held that the Japanese document sufficiently disclosed all essential features of the claims, including the structural characteristics of the OSM, to render the claims not novel.

The court also rejected the argument that certain features of the claims were not essential. It found that all claimed features, including the structural characteristics of the OSM, were essential to the invention as defined by the claims.

The opposition succeeded on the ground of lack of novelty, leading to the refusal of several claims. The court allowed Target sixty days to propose suitable amendments to overcome the findings. If suitable amendments were not proposed within this time, the application would be refused. The court awarded costs to Williams, the successful party in the opposition.

Orders