Over the past six months or so, FOXTEL Management Pty Ltd (‘FOXTEL’) has opposed the grant of no fewer than nine patent applications in the name of TiVo, Inc.
We suspect that this may turn out to be the beginning of a protracted dispute between the two companies. At stake is the very viability of TiVo’s technology in the Australian marketplace, while FOXTEL’s freedom to continue providing advanced digital home entertainment services is also on the line.
The fact is that TiVo has failed to make a big impact in the Australian market. At the same time, FOXTEL is providing digital cable television services that include ‘intelligent’ features almost identical with those of TiVo’s ‘smart digital video recorders’.
Even without looking at the details of TiVo’s patent applications, it seems inevitable that FOXTEL would infringe at least some of the patent claims should the applications proceed to grant.
Carol Almond-Martin v Novo Nordisk Health Care AG APO 42 (21 June 2011)
Extensions of time – request for extension of time to pay acceptance fee after application opposed – whether relevant ‘error or omission’ involved in prior decision to abandon application – whether service of Notice of Opposition after payment deadline ‘causative’
We regularly have cause to write about the process of obtaining extensions of time under the Australian IP laws and regulations (often enough for this to be one of the special topics under the ‘Law and Practice’ category in our ‘Topics’ menu, above).
The circumstances in which extensions of time are granted – or refused – are necessarily based upon the facts of the particular case. Almost every published decision is therefore a useful lesson in how, or how not, to present evidence and arguments in support of the grant of an extension of time. Whether the circumstances leading to a missed deadline arose in the applicant’s office, or that of their agent or attorney, the basic rules to trigger application of the extension provisions are quite simple:
the must first be an identifiable error, omission, or circumstance beyond the control of the relevant person; and
this must have been causative of the failure to meet the deadline in question, which generally means that it must have occurred, or first arisen, prior to the deadline.
This decision in relation to an extension request by Novo Nordisk Health Care AG, by Hearing Officer Dr Steven Barker, is an example of an approach that failed to show that these basic requirements were satisfied. With the benefit of hindsight, it is not hard to see what went wrong and what might, in retrospect, have been done differently.
Back in March and April, we posted a series of nine articles on the Exposure Draft of the Bill that was released for public comment by IP Australia. These articles covered eight selected aspects of the Draft Bill, plus one final summary article (see Australian Patent Reform – Wrap-Up).
In this post, we revisit those eight original topics, and look at how the Senate Bill differs (if at all) from the exposure draft, to see how IP Australia’s consultation has affected the proposed legislation. (Note that the headings below link to our original articles on each topic.)
Senator Kim Carr, the Minister for Innovation, Industry, Science and Research has introduced the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 in the Australian Senate.
The Minister's somewhat jingoistically-titled press release, 'IP Reforms to Safeguard Aussie Ideas', can be found here. (Why is it, we wonder, that IP reforms are always touted as benefiting local innovators, when most countries are bound by international agreements to provide equal access to foreign applicants? Compare this with the current proposed US reform bill, the 'America Invents' Act.)
VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd FCA 660 (10 June 2011)
You might have thought that an inventor, or other employee of a patent-owning company, would make a poor ‘impartial’ expert witness in a patent infringement case.
You might also have thought that a relatively senior academic who has ‘published books and papers on engineering design theory, engineering education, the innovation process, and mechanical equipment research and development’ would make an excellent expert witness.
However, if you thought either one – or both – of these things, then you would be sadly mistaken, at least in this case, and under the law as it stands in Australia.
This Federal Court decision, of Justice Kenny, concerns a claim by VIP Plastic Packaging Pty Ltd (‘VIP’) that various claims of its Australian patent no. 2001235262 were infringed by B.M.W. Plastics Pty Ltd (‘BMW’). For its part, BMW counterclaimed that the patent was invalid on various grounds, including lack of novelty and lack of inventive step.
The patent is entitled ‘Variable-length Dip Tube for a Fluid Transfer Container’, and the specification states that the invention relates to ‘container apparatus and more particularly relates to a variable-length dip tube suitable for connection to a pump or valve at an opening of a container.’
The technology, however, is not the aspect of the case that interests us. Nor is the court’s entirely conventional application of the law relating to infringement and validity of the patent. We are interested in the court’s treatment of the evidence provided by expert witnesses for the two parties, which was ultimately wholly determinative of the findings that BMW had indeed infringed the VIP patent, and that the patent is valid.
To Australians, at least, Holden Special Vehicles (HSV) – the official branded performance vehicle division of General Motors Holden – requires little introduction. Whether you love them or hate them, the modified Holden vehicles with their unique body-work, alloy wheels, interiors, upgraded performance engines, brakes, transmissions and suspension are hard to miss on the roads.
The HSV-branded performance division is operated by a company called Premoso Pty Ltd under licence from GM Holden. Premoso only sells genuine spare parts and accessories for HSV vehicles to the network of authorised HSV Dealers, which are required to only sell spare parts and accessories to customers who provide a build and tag number to certify their ownership of a HSV vehicle.
This exclusive arrangement (which would no doubt otherwise fall foul of competition law) is supported by relevant intellectual property rights, including registered trade marks for HOLDEN and HSV, as well as relevant badges, and design registrations, all of which are owned or controlled in Australia by GM Holden Ltd and related companies.
The decision of Justice Gordon in the Federal Court of Australia in GM Holden Ltd v Paine concerns what appears to have been a particularly flagrant case of counterfeiting of HSV parts, and alloy wheels in particular. While Her Honour also found in favour of Holden in relation to accusations of trade mark infringement and the common law tort of ‘passing off’, our interest was piqued by an award of A$10,000 by way of ‘additional damages’ under subsection 75(3) of the Designs Act 2003. Notably, since 2007 there have been similar provisions available under subsection 122(1A) of the Patents Act 1990.
On 15 June 2011, the Australian Minister for Innovation, Industry, Science and Research, Senator Kim Carr, Jointly with the Treasurer Wayne Swan, announced that crossbench Senators are giving their support to a new R&D Tax Credit Program.
TheR&D Tax Credit was announced in the May 2009 Budget as part of the Government’s Innovation Agenda, Powering Ideas – An Innovative Agenda for the 21st Century. It was originally intended to commence on 1 July 2010, but has been delayed for a year due to what the Labor Government has characterised as a ‘parliamentary road-block put in place by the [Liberal/National conservative] Coalition’.
As of July, the new Senators elected in last year’s elections take their seats, resulting in a major change in the make-up of the upper house, with nine Greens senators gaining the balance of power.
Although the final legislation will not be passed until after 1 July 2011, when the new Senate sits, companies undertaking eligible R&D activities from this date will be entitled to access the R&D Tax Credit.
It is fair to say that the guidelines – and indeed Clause 15(3A) itself – have received very little support in the published submissions. In fact, out of 36 submissions, we count only two relatively unqualified supporters, and one of those (the submission of Internet New Zealand) consists simply of a concurrence with an earlier submission from the New Zealand Open Source Society (NZOSS) which is not amongst those published by MED.
One thing that is surprising about the submissions is the breadth of interests represented. No one is surprised when patent attorneys express concerns about constraints on the scope of patentable subject matter, and it is hardly a shock to find Microsoft amongst the contributors. However, other companies and organisations expressing concerns about the legislation and guidelines comprise a cross section of domestic and foreign private and public entities, including The Director General of Trade for the European Union, Auckland UniServices, the New Zealand Institute of Plant and Food Research, Fisher & Paykel Appliances, the Business Software Alliance, Geological and Nuclear Sciences Limited, Airways New Zealand, Intel, Thermal Chemistry Limited, Qualcomm and Air New Zealand.
Despite these diverse interests, a number of common themes emerge in many of the submissions:
widespread opposition to clause 15(3A) itself ;
the observation that the stated intent of clause 15(3A) is inconsistent with its plain wording;
concerns that the guidelines will have no legal standing, and will therefore do nothing to alleviate uncertainty;
a preference for expressly aligning New Zealand law with that of Australia, the US or Europe; and
objections that the proposed exclusion is inconsistent with New Zealand’s obligations, under the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement, to provide protection for ‘inventions in all fields of technology’.
Pharmaceutical extensions of term – whether patent for a subsequent medical use of a known compound can be extended – whether registered product contains a compound within the scope of patent claims – whether date of amendment of ARTG registration can be used as the basis for extension application
In a decision by Hearing Officer Dr Steven Barker, the Australian Patent Office has refused to grant to Celgene Corporation extensions of the term of two patents relating to the pharmaceutical product marketed as REVLIMID.
The active ingredient in REVLIMID is lenalidomide, a drug which is a close relative to the infamous thalidomide. Lenalidomide was originally developed as a treatment for multiple myeloma (a rare cancer of the blood), and has more recently been shown to be effective in treating the class of genetic blood disorders disorders known as myelodysplastic syndromes (MDS).
Celgene’s application to extend the term of its patents was based specifically on the use of REVLIMID in the treatment of MDS. This particular indication was first added to the Australian Register of Therapeutic Goods (ARTG) in May 2010, although the product itself had been registered since 2007.
The Hearing Officer found not only that the applications for extension of term were filed out-of-time, but also that neither of the two patents is eligible for an extension of term based on the registration of REVLIMID. In particular, this decision indicates that:
patents for subsequent medical uses of drugs (e.g. having claims of the form ‘compound X when used for the treatment of condition Y…’) cannot be extended on the basis of a registration of a product containing the compound;
for a patent directed to specific novel forms of a compound to receive an extension of term, evidence must be provided showing that the registered product actually contains the compound in the specific form claimed; and
an application for an extension of patent term must be based upon the original registration of a product, and not upon a subsequent registration or amendment by which an additional indication is included on the ARTG.
Siemens Water Technologies Corp v GE Betz Pty Ltd FCA 641 (2 June 2011)
Practice and Procedure – whether extent of discovery may be limited by reference to the parties’ contended claim construction
As many readers – and particularly those from common law jurisdictions – will be aware, ‘discovery’ (or ‘disclosure’) is the process by which the parties to a legal dispute are able to obtain relevant evidence from each other prior to the commencement of the main trial.
Discovery can be vital in patent infringement proceedings, because sometimes it is not possible to demonstrate that a particular accused product or process infringes a patent without access to technical information known only to the alleged infringer. Often the patentee will seek discovery of a wide range of material, while the accused infringer will resist extensive discovery on the basis that much of what is being sought will not be relevant, and the patentee is merely engaging in a ‘fishing expedition’.
Of course, an apparatus or process will only be infringing if it falls within the scope of one or more claims of the patent. Consequently it is possible, in principle at least, that the legitimate extent of discovery may depend upon the proper construction (i.e. interpretation) of the patent claims. In Australia, disputes over claim construction are decided by the court during the main trial, and not at some preliminary stage (such as the ‘Markman hearings’ normally held for this purpose in the US).
So what happens if the parties disagree on the proper construction of the claims in the course of discovery?
The general principle under the Australian law is that, unlike in the US, a granted patent enjoys no presumption of validity. There is no requirement for ‘clear and convincing evidence’ of invalidity in Australia – in an application for revocation of a patent the court is to apply the civil standard of the ‘balance of probabilities’, which is similar to the ‘preponderance of the evidence’ standard for which Microsoft argued in its dispute with i4i.
However, this decision shows that, in the absence of a defence by the patentee, an applicant for revocation may prevail in the absence of any evidence whatsoever.
Overnight, Australian time, the Supreme Court of the United States issued its mch-anticipated decision in Microsoft v i4i. And for the second time this week it has upheld a decision of the Court of Appeals for the Federal Circuit (CAFC), by ruling that section 282 of the US Patent Act, which provides that '[a] patent shall be presumed valid' and '[t]he burden of establishing invalidity . . . shall rest on the party asserting' it, requires an invalidity defense to be proved by 'clear and convincing evidence.'
For those unfamiliar with the case, i4i (and co-respondents) are the proprietors of US Patent No. 5,787,449, which claims an improved method for editing computer documents. i4i sued Microsoft for willful infringement of the patent, and Microsoft asserted, in its defense, that the patent was invalid the claimed invention had been on sale in the United States more than one year prior to the filing of the patent application.
Kmart Australia Limited v Joseph Joseph Limited ADO 2 (21 April 2011)
Designs Act 2003 – Extensions of time – whether ‘misapprehension’ or ‘ignorance’ of the law provides basis for an extension of the time to file a design application claiming convention priority from earlier foreign application
We have previously used the excuse that protection for industrial designs is provided by ‘design patents’ in some jurisdictions (most notably the US) to justify commenting on this blog in relation to decisions on registered designs matters.
In this case, we have two additional excuses. Firstly, we do not believe that there has been any previous published decision in relation to an application for an extension of time under section 137 of the Designs Act 2003. Secondly, the relevant provisions in the Designs Act are almost identical with those set out in section 223 of the Patents Act 1990, such that decisions under one act are likely to be pertinent to the other. (Section 224 of the Trade Marks Act 1995 also includes similar provisions.)
Hearing Officer Heath Wilson was required to consider whether it was appropriate to grant an extension of time so that the applicant could belatedly (by 20 months) file two applications – for a chopping board and a bowl respectively – in Australia claiming priority from earlier European Community Design Registrations. The evidence provided on behalf of the applicant suggested that the reason for failing to file the applications in time was merely that the applicant was unaware that the designs were not protected in Australia.
Aphapharm Pty Limted & Ors v H Lundbeck A/S  APO 36 (1 June 2011)
Back in July last year, we reported on the decision in H Lundbeck A/S v Alphapharm Pty Ltd FCAFC 70 (11 June 2009), which related to the refusal of a pharmaceutical extension 0f term for Lundbeck’s patent no. 623,144, which covers the S- or (+)-enantiomer of the antidepressant compound citalopram (see Pharmaceutical Extensions and International Inequities for further details).
A new Patent Office decision, by Hearing Officer Karen Ayres, is a direct consequence of the earlier Federal Court decision. In particular, in an attempt to recover the patent term extension it had lost as a result of the court’s decision, Lundbeck filed a fresh application for an extension of term. However, in order for this application to proceed, Lundbeck requires an extension of time of no less than 121 months, from the date upon which the request should have been filed originally.
The Patent Office initially proposed to grant the requested extension. Four parties opposed.
Following a contested opposition, and a hearing, the Patent Office has confirmed the decision to allow Lundbeck extension of time within which to apply for the extension of term.
Societe des Produits Nestle S.A v Cadbury Holdings Limited APO 35 (31 May 2011)
Opposition – final determination – amendments consistent with findings of initial decision sufficient to overcome grounds of opposition – opponent too late to raise objections to initial findings
This decision by Hearing Officer Karen Ayres is a final determination of an opposition originally heard on 24 March 2010, with the initial decision being issued on 24 June 2010 (Societe Des Produits Nestle S.A. v Cadbury Holdings Limited APO 9).
This case is a lesson for practitioners of the importance of identifying appealable findings in a decision, and filing any appeal within the relevant time limit following the date of the decision. The fact that a decision may be of an ‘interim’ nature, and not a final determination, does not mean that any objection to, or appeal of, specific findings in the decision can be delayed until the time of final determination.
Cadbury Holdings Ltd (‘Cadbury’) had been partially successful in an opposition to a patent application filed by Societe Des Produits Nestle S.A (‘Nestle’), however the Hearing Officer had provided Nestle with a strong indication of the nature and scope of patentable subject matter in the application, and provided it with an opportunity to amend its claims to overcome the successful ground of opposition.
Nestle duly made the suggested amendment, which was subsequently allowed by the Patent Office, and the case returned to the Hearing Officer for final determination. It was only at this stage that Cadbury raised objections to the amended claims.
On 7 April 2011, IP Australia and the New Zealand Ministry of Economic Development released a discussion paper for a trans-Tasman patent attorney regulatory framework.
The key reform proposed in the discussion paper is the establishment of a single trans-Tasman (i.e. across Australia and New Zealand) governance body or board to regulate education, discipline and registration. The central proposal is that the respective roles and functions of the Australian Professional Standards Board for Patent and Trade Marks Attorneys (PSB), the equivalent body proposed to be established in New Zealand, the Director General of IP Australia, and the New Zealand Commissioner of Patents would be merged into a single new body.
Under this regime there would be:
a single definition of the functions and services which can only be performed by a registered patent attorney or legal practitioner;
a single patent attorney code of conduct;
a single disciplinary regime;
a consistent attorney qualification/continuing education requirements;
a single registration process and register;
a single fees regime; and
a single secretariat support unit.
Essentially, in place of the current system, in which Australia and New Zealand have separate regimes for the registration and regulation of patent attorneys (i.e. a practitioner is an Australian Patent Attorney, a New Zealand Patent Attorney or, commonly, both), there would instead be a single ‘Trans-Tasman Patent Attorney’.
We think it would be fair to say that the comments from Australian practitioners are generally not unfavourable, while the submissions by New Zealand practitioners are more numerous (despite the smaller size of the New Zealand profession), and almost universally opposed to the proposal. And, frankly, we find this completely understandable!