ABC Photosigns Pty Ltd v Cody Live Pty Limited
[2015] APO 58
•26 August 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ABC Photosigns Pty Ltd v Cody Live Pty Limited [2015] APO 58
Patent Application: 2006246494
Title:An improved real estate signboard system
Patent Applicant: Cody Live Pty Limited
Opponent: ABC Photosigns Pty Ltd
Delegate: Dr N.R. Madsen
Decision Date: 26 August 2015
Hearing Date: 24 July 2015, in Canberra
Catchwords: PATENTS – real estate signboard control system and method including a video display – section 59 – opposition to grant of a patent – grounds of novelty, inventive step, manner of manufacture – application not entitled to divisional status – earliest priority date is filing date of application – claims are novel – claims are inventive – claims are for a manner of manufacture – opposition unsuccessful – costs awarded against opponent
Representation: Patent applicant: Did not appear
Opponent:Benjamin Fitzpatrick of counsel instructed by Richard Brown of Davies Collison Cave, Melbourne, Victoria.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006246494
Title:An improved real estate signboard system
Patent Applicant: Cody Live Pty Limited
Date of Decision: 26 August 2015
DECISION
The opposition is unsuccessful. Claims are novel, inventive and constitute a manner of manufacture.
The application is not entitled to divisional status. The claims have an earliest priority date of 28 November 2006.
I award costs in accordance with Schedule 8 of the Patent Regulations 1991 against ABC Photosigns Pty Ltd.
REASONS FOR DECISION
Background
This matter relates to patent application 2006246494 in the name of Cody Live Pty Limited (the applicant), filed on 28 November 2006. The patent request was amended during examination of the application to make the application a divisional of earlier application 2005316196 (this application was filed as an application under the Patent Cooperation Treaty and published as WO 2006/063393). This earlier application has a priority date of 14 December 2004.
The request for examination of the patent application was filed on 11 November 2010. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. I also note that any subsequent reference to subsections of the Patents Act relates to the Patents Act 1990, prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
The application was advertised as accepted on 15 August 2013. A notice of opposition to grant of a patent was filed on 15 November 2013 by ABC Photosigns Pty Ltd (the opponent), followed by a statement of grounds and particulars on 17 February 2014. The opponent completed evidence in support on 19 May 2014 and with this evidence filed an amendment to the statement of grounds and particulars that was subsequently allowed. The applicant chose not to file evidence in answer, instead filing an amendment to the specification on 21 August 2014. This amendment was subsequently allowed on 18 December 2014. As no evidence in answer was filed there was no opportunity for the opponent to file evidence in reply.
The applicant chose not to appear at the hearing. The opponent appeared in person.
The evidence
Evidence filed by the opponent consists of:
Evidence in support in the form of a declaration from Mr Michael Joseph Hollingsworth (MJH) dated 18 May 2014.
Evidence in support in the form of a declaration from Mr Graeme Kenneth Hood (GKH) dated 19 May 2014 and 13 supporting exhibits (GKH-1 to GKH-13).
I also make note that the opponent questioned the priority claim of the application. On this basis it was necessary to consult the parent (PCT) application which was not adduced by the opponent in their evidence. In accordance with Regulation 5.23 as amended by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1), I informed the parties after the hearing of my intention to rely on this document as evidence providing them an opportunity to give evidence or make representations about the document. The parties chose not to do so. Therefore, also forming part of evidence is the following patent specification:
· WO 2006/063393 A1 (Live Board Holdings Pty Ltd) 22 June 2006
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Grounds of Opposition
The opponent pressed the grounds of novelty, inventive step and manner of manufacture at the hearing. The opponent also argued that the application was not entitled to divisional status and as such, not entitled to the associated priority date of the parent application.
The Specification
The invention described in the specification relates to the field of real estate signboards. Traditional signboards generally contain static information such as photographs and text. To create such a signboard, a real estate agent would provide a sign printer with details to be printed and the sign printer would arrange for delivery to the real estate property. These signboards do not have dynamic displays (such as a video display) and there has conventionally not been seen a need for the presentation of “live” information outside a real estate property.
The specification then describes the signboard in the parent application including a lockable, weatherproof housing within which a video display unit, computer processor, power supply and wireless communication module are housed. The signboard is adapted to display video information about a property.
The specification suggests that the present invention seeks to provide a system for marketing a real estate property that will overcome or ameliorate at least one of the deficiencies of the prior art.
The claims
The specification ends with 24 claims, whereby claims 1 and 18 are independent.
1. A real estate signboard control system, comprising:
a signboard adapted for use in marketing a real estate property, said signboard including:
a substantially weatherproof lockable housing,
a video display unit substantially housed within said lockable housing and adapted to display digital advertisements,
a computer processor housed within said lockable housing for controlling said video display unit,
a power supply for providing power to said signboard, and a signboard communication module for coupling said signboard to a communications network;
a central database operating on a computer system, said database including a database communication module for coupling said database to said communications network, wherein said central database is adapted to:
receive an order via said communications network from a real estate user in relation to said real estate property, said order including information relating to the real estate property;
store said information relating to the real estate property; and
transmit an electronic signal to prepare the signboard based on the stored information relating to the real estate property; and
a distribution centre for preparing said signboard, wherein said distribution centre is adapted to:
receive said electronic signal; and
prepare said signboard for use with said real estate property based on said received electronic signal, by uploading to said signboard said information relating to the real estate property for display as a digital advertisement on said video display unit of said signboard.
18. A method for delivering a signboard for use in association with marketing a real
estate property, said method including the steps of:
receiving at a central database an order from a real estate user relating to said real estate property, said order including information relating to said real estate property;
preparing a signboard for use in association with said real estate property, based on said order, said signboard including:
a substantially weatherproof lockable housing,
a video display unit substantially housed within said lockable housing and adapted to display digital advertisements,
a computer processor housed within said lockable housing for controlling said video display unit,
a power supply for providing power to said signboard, and
a signboard communication module for coupling said signboard to a communications network,
wherein preparing said signboard includes uploading said information relating to said real estate property onto said signboard;
installing said signboard at said real estate property;
arming said signboard, wherein arming said signboard activates said signboard
communication module to download from said central database via said communications network a digital advertisement for display on said video display unit, said digital advertisement being derived from said information relating to said real estate property included in said order; and
displaying said digital advertisement on said video display unit of said signboard.
Claim construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
There are a number of key features of the independent claims that warrant discussion as to their proper construction. These include features of the signboard, video display unit, central database operating on a computer system, the distribution centre of claim 1, and arming said signboard of claim 18.
Signboard
The real estate signboard control system of claim 1 and the method for delivering a signboard of claim 18 both include a signboard having the features of a video display unit and a computer processor for controlling the display unit, wherein both the display unit and the computer processor are housed within a substantially weatherproof lockable housing. The signboard also includes a power supply and a communication module for coupling the signboard to a communications network. These items need not be contained within the housing.
Video display unit
The opponent submits that the phrase “video display unit” encompasses:
“…any form of display that is capable of displaying multiple or moving images, including standard computer displays, television displays, and ‘variable message signs’, including arrays of relatively low resolution (and possibly monochromatic) light emitting elements such as are used to communicate traffic warnings, for example.”
The basis for this proposed construction is found in the declaration of Mr Hood at [29] where he states that such a construction is consistent with the phrase being a term of the art.
I must say that I find great difficulty in accepting that a video display unit includes the type of roadside traffic sign that may be comprised merely of a relatively small number of monochromatic lights arrange to display for example, a “live” arrow. Applying a more common understanding of the concept of “video”, I would imagine that the phrase would be understood by an addressee of the patent application as more limited to the type of device used to display for example, a television signal, or connected to a computer as a monitor of some sort to display images or text. Such an understanding is consistent with a basic definition of “video” found in the Macquarie Dictionary (The Macquarie Dictionary, 6th ed. 2013, from to or employed in the transmission or reception of televised material as displayed on television screens or visual display units.”
Here the Macquarie Dictionary also defines the term “visual display unit”:
“...a computer terminal which displays information on a screen.”
The opponent does not provide any evidence beyond the statement at [29] of Mr Hood’s declaration to support the assertion that the term “video display unit” should, as a term of the art, be so broadly construed. In this regard I am not convinced by the evidence that the term should be construed in the manner suggested by Mr Hood. I construe the term “video display unit” to be a display unit of the type used to moving display images or text at resolutions analogous to those of televisions/computer monitors.
Central database operating on a computer system
As submitted by the opponent, the term “database” is broad, there being nothing in the specification to suggest that it is anything more than general computer storage. Claim 1 adds that the database includes a database communication module for coupling to a communications network. The database is also “adapted to” receive an order from a user via the communications network, store information relating to the order; and transmit an electronic signal. In this sense what appears to be encompassed by a “database operating on a computer system” as defined in the claim is a computer based system involving software/modules that are configured to enable the receipt of information (relating to real estate) from a user via the communications network, storage of said information, and transmission of an electronic signal based on the stored information. Here communication via a network and transmission of an electronic signal may be via the internet or a mobile phone network, and may be achieved by some sort of information receipt, storage and forwarding arrangement involving for example, signals such as a voice-over-IP (VoIP) call, email or SMS.
In relation to the term “central”, the opponent submits that the term may have potential in the context of one database communicating with multiple distribution centres; however claim 1 only requires a single database. I agree and on this basis consider that the term “central” has little effect on the claim other than to support the fact that that the signboard, database, and distribution centre are physically separate devices/components of a system.
Distribution centre
A distribution centre is some sort of specialised facility such as a warehouse that stores items/products for distribution. The distribution centre as claimed is “for preparing the signboard” and in accordance with the description this preparation appears to encompass as simple a situation as a person uploading information to the signboard from a device separate to the central database. The distribution centre as claimed is adapted to receive an electronic signal based upon stored real estate information from the central database (this may again be via the internet or a phone network), and to upload said information for display as a digital advertisement on the video display unit.
Arming the signboard
Claim 18 includes the features of:
…arming said signboard, wherein arming said signboard activates said signboard communication module to download from said central database via said communications network a digital advertisement…and displaying said digital advertisement…
Plainly, arming the signboard means simply activating the signboard in some way. I make reference to the description which discusses arming of the signboard:
“According to one embodiment of the present disclosure, the signboard is armed manually by a person who installs the signboard at the real estate property.
According to another embodiment of the present disclosure, the signboard is armed automatically by the global positioning system (OTPS) when the signboard reaches a predetermined location defined by a set [of] coordinates.” (page 6 lines 5-10)
…
“In a first embodiment of the system of the present invention, once the signboard 1 is armed, the signboard 1 automatically downloads information that is to be displayed on the video display unit from the central database 4. Preferably the person from the distribution centre who delivers the signboard to the real estate property manually arms the signboard. This can be done by inserting a key into an electronic lock, entering in a unique code into a touch pad thereon or other similar means of activation.
Once the signboard 1 is armed and the information that is to be displayed on the signboard 1 has been downloaded, the signboard 1 emits a heartbeat signal at regular intervals to the central database…” (page 9 lines 12-21)
The opponent’s expert, Mr Hood at [52], also adds that arming may include such things as:
“…remote activation via the network, or simply turning on the signboard, either by a
switch, for example, or by simply supplying power to it (e.g., plugging it in).”
I accept that arming may include the actions identified by Mr Hood. These actions, and those discussed in the description are consistent with a plain understanding of arming as being the preparation of a thing for use. The claimed feature then adds that it is this arming which activates the action of the communication module to actually download information. I consider the sequential wording within the claim of first arming, whereby the arming activates the communication module, points to the actions of arming and causing download as being separate steps. In this sense, the signboard is activated in some way which then automatically causes the communication module to download information, this construction finding clear basis in the description. I do not consider the claimed feature includes simply directly activating the communication module to download information, whereby arming equates with direct activation.
Priority Date
Subsection 43(2) of the Patents Act provides that the priority date of a claim is either the filing date of the specification or a date otherwise determined by the Patent Regulations. Subregulations 3.12(1)(c) and 3.12(2C) relevantly provide that a claim of a divisional application, if fairly based on matter disclosed in the parent application, would take the priority date that the claim would have had if it had been included in the parent application.
Subsection 40(3) of the Patents Act at the relevant time required that the claims of a specification must be fairly based on the matter described in the specification. The Lockwood Security Products Pty Ltd v Doric Products Pty Ltd decision, [2004] HCA 58, 217 CLR 274, at [69], put this as a requirement that there be a real and reasonably clear disclosure of what is claimed. The Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth decision, [2011] FCAFC 132, at [65], stated the same principle applied to a determination of external fair basis. That is, the claims must be fairly based on matter disclosed in a parent application or a priority document
The opponent challenged the entitlement of the claims of the application to the earliest priority date, being 14 December 2004. The determination of the priority date of the claims is relevant as it determines whether particular evidence forms part of the prior art.
In regard to independent claim 1, the opponent pointed to the fact that there appeared to be no disclosure of the claimed distribution centre in the parent (PCT) application. As claimed, the distribution centre is adapted to receive an electronic signal from the central database and upload information to the signboard for display as a digital advertisement.
While there is no express reference in the parent application to a “distribution centre”, there is reference to stationing the real estate signboard on display at a real estate property (page 4 lines 29-30 and page 5 lines 14-16). Such stationing naturally involves something that may be considered a “distribution centre”. Nonetheless, such a disclosure of a distribution centre falls short of a real and reasonably clear disclosure of a distribution centre adapted to receive an electronic signal from the central database and upload information to the signboard for display as a digital advertisement.
Regarding the aspect of the distribution centre whereby preparation of the signboard by the distribution centre appears to encompass as simple a situation as a person uploading information to the signboard from a device separate to the central database, I refer to figure 3 of the parent application.
In figure 3 of the parent application, the real estate signboard (left of the figure) can communicate with a variety of devices via a wireless interface. For example, digital advertisements stored on signboard computer processor 5 may be uploaded or updated via wireless communication module 6 from a remote database 11 or by a real estate agent onsite via a notebook computer 13, both the database and the notebook having a suitable wireless transceiver. Here it is possible to equate the remote database with the claimed feature of a “central database” and also equate the notebook computer with a person uploading information to the signboard from a device separate to the central database. However, I find no disclosure in the parent document of adaptation of the notebook computer such that it may be equated with the distribution centre as claimed. In this regard there is no disclosure of any particular adaptation of the notebook computer or remote database such that these devices are arranged to communicate with each other in some way. Further, I see no basis to consider that the system of figure 3 is inherently adapted in the manner required by the claimed distribution centre.
It follows that the claimed invention is not fairly based on matter disclosed in the parent application and therefore, not entitled to the earliest priority date of the parent application. Therefore the priority date of claim 1, and dependent claims 2-17, is the filing date of the application being 28 November 2006.
Similar can be said of the feature in independent claim 18 relating to the arming and subsequent activation of the communication module and downloading of data. While a signboard will necessarily be armed in some way (eg. energising the signboard power supply is disclosed in the parent application on page 4 line 27), there is no disclosure in the parent application of the features as claimed. Thus the priority date of claim 18, and dependent claims 19-24, is the filing date of the application being 28 November 2006.
In accordance with the above findings in relation to the priority date of the claims I find that there is no claim that is eligible to take the priority date of the parent application. It follows that present application is not entitled to proceed as a divisional application under section 79B.
Manner of Manufacture
Section 18(1)(a) requires that an invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. Whether an invention is a manner of manufacture is assessed by asking whether the claimed invention lacks the necessary quality of inventiveness on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; [1995] HCA 15; (1995) 183 CLR 655 at 655).
Additionally, National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 at 275 describes the concept of patentable processes:
"The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."
Most relevantly, two recent Federal Court decisions considered the patentability of computer implemented inventions:
Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”); and
RPL Central Pty Ltd v Commissioner of Patents [2014] FCA 871 (“RPL”)
In Research Affiliates Kenny, Bennett and Nicholas JJ found that a computer implemented method of creating a securities index did not involve a manner of manufacture. In RPL Middleton J found that a computer implemented method automatically converting criteria relating to recognition of prior learning into a single entry question and answer format was a manner of manufacture. Their honours distinguished their finding with that of Middleton J on the basis that the invention itself, and the operation of the computer in RPL were “inextricably linked”, or in other words the computer was “integral” to the invention in RPL (at paragraphs [98]-[100]). On the other hand, the invention of Research Affiliates was said to be a scheme which simply happened to use a computer to affect the implementation (at paragraph [112]). Notably, paragraphs [118] and [119] of Research Affiliates state:
“In the context of the claim, the significance lies in the content of the data rather than any specific effect generated by the computer. The computer-implementation is an essential integer of the claimed process. That is, of course, important. It is of particular importance in the assessment of, for example, novelty and infringement. However, in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of the claimed invention but also the substance of that invention.
The claimed method in this case clearly involves what may well be an inventive idea, but it is an abstract idea. The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme. There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation. Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that. It is no part of the claimed method that there is an improvement in what might broadly be called ‘computer technology’.”
From Research Affiliates it is the case that where it is clear from the specification as a whole that an invention is truly a scheme, an abstract idea or mere intellectual information, which are not patentable themselves, then implementing that invention on a computer is not an artificially created state of affairs that can be held to be patentable (at [115]).
The opponent submitted that none of the claims were for a manner of manufacture by reference in the entirety of their submissions to the decision in Research Affiliates. The lead submission of the opponent was:
“Properly understood, the system and method disclosed and claimed in the opposed application is directed to the idea of promoting real estate using an electronic signboard. The “end result of the entire process” of the invention is a “set of data” or “intellectual information” being the information on a signboard relating to the property – such as the features of the property and the date of auction. As in Research Affiliates the subject matter of the specification is truly the scheme, the idea.”
The opponent also makes further alignment of the present application with Research Affiliates. For example:
“The steps of the system/method are performed by persons using…standard computer programs working as normal…
There is no ingenuity in the way in which computers (and associated software) are used in the scheme. The computers are merely a ‘modern and efficient tool by which to perform the method of the claimed invention…’
…There are no steps that are ‘foreign to the normal use of computers’ or ‘any indication that any unusual technical effect is utilised’…
It is apparent that the scheme is merely implemented in a computer and a standard computer at that….
The output of the system/method is intellectual information…”
While I accept that the invention is broadly directed to the idea of promoting real estate using an electronic signboard, in order to properly determine whether the claims are a manner of manufacture it is necessary to give consideration to the particular features of the claims.
Claim 1 is directed towards a real estate signboard control system involving a signboard, central database and distribution centre. Firstly, the claim is to an apparatus whereby it is clear that there is more than one computer processor involved. There is a processor in the signboard, a processor in the central database and necessarily a processor forming part of the distribution centre. The signboard, central database and distribution centre are adapted, or in other words equipped and programed, to communicate with certain elements of the claimed system in a particular way. For example, the signboard and the central database are coupled to a communications network. The central database is arranged to receive information from a user via this communications network. The central database and distribution centre are arranged to communicate electronically. Furthermore, the distribution centre is arranged to upload data to the signboard.
Hence, what is described by claim 1 is a system involving a number of “computers” arranged to interact in a particular way to enable control of a real estate signboard. In this sense, there is a clear material advantage provided by the claimed invention. Furthermore, mindful of RPL and Research Affiliates, I am led to consider that the particular adaptations of the “computers” and thereby the system of the claimed invention are in fact, “inextricably linked” or “integral” to the invention in a similar manner to the findings of Middleton J in RPL. I do not see the specification as a whole suggesting that the invention is simply an “abstract idea” or “intellectual information” as would be necessary for me to follow the findings of Research Affiliates. In other words, I do not see any basis to consider that the invention as claimed, as a matter of substance, does not involve the arrangement of computer systems in a particular way that in effect provides what might be called an improvement in the technology related to a real estate signboard control system.
Therefore, I find claim 1 and dependent claims 2-17 involve a manner of manufacture.
Claim 18 is directed towards a method for delivering a signboard for use, in this instance involving a signboard and a central database. An important aspect of this claim is the feature relating to the arming of the signboard and subsequent download of information from the central database discussed above at [25]-[28]. This feature clearly provides for a useful and material feature in the preparation of a signboard. The steps of arming a signboard wherein arming activates the signboard communication module to download are by no means abstract, offering a material advantage along with being inextricably linked to the operation of the physical apparatus.
Therefore, I find claim 18 and dependent claims 19-24 involve a manner of manufacture.
Novelty
For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:
"If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated…
To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee…”
I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
The following documentary evidence was pressed by the opponent in its submissions as depriving the claimed invention of novelty:
· exhibit GKH-2: Archived web pages of the web site at available from the "Wayback Machine" at Board"). These web pages are archived back to October 2004. Representative pages from February and June 2005 are provided.
· exhibit GKH-3: WO 2002/101701 A2 (Kent Ridge Digital Labs) 19 December 2012
· exhibit GKH-4: US 6624742 B1 (Romano et al.) 23 September 2003
GKH-2
Information identified by way of GKH-2 represents various archived webpages of the website Of this information, there are 4 separately addressed webpages. Two of these webpages are captured in the “Wayback Machine” on 6 February 2005 with the other two web pages captured on 5 February 2005 and 15 June 2005, each of these dates being before the priority date of the claims. While there seems to be no basis for me to consider that these documents form a single document for the purpose of assessing novelty, I understand the opponents submission to be that as a whole these webpages show public disclosure/use of the claimed invention.
The opponent points to two of the archived web pages (archived on 6 February 2005) which discuss a public launch of Live BoardTM. Information on a first of these pages contains a news article dated 11 January 2015 which states:
“The next generation of the real estate sign board has arrived. Real Estate’s biggest kept secret is finally unveiled by the team at creative real estate agency Costa Koulis. The Live BoardTM takes the old real estate sign board into its next logical form, incorporating video.”
…
“The Live BoardTM can be viewed on site at 41/75A Ross Street Glebe, Sydney.”
Accompanying this text is a photograph of a real estate sign board containing within it a video display. Further information is contained on the second of these pages in a news article dated 28 January 2005 stating:
“Following from the overwhelming reception by the public with the successful launch of the world’s first Live BoardTM in Glebe, Sydney, the formation of the Live BoardTM Company has just been announced by creative real estate agency Costa Koulis.”
Another of the associated archived web pages discusses the features of the live real estate sign board. The page entitled, “What is the Live BoardTM?” discloses that the Live BoardTM has the features of a “…high resolution LCD screen… aluminium casing… 10 mm safety laminated glass (type used in shop front windows)…. Installed by either clamping to front railing, or secured to ground, front lawn or wall…”. Additionally this page states in regard to the Live BoardTM’s security that:
“The material which it is made of is virtually bullet proof. It incorporates ATM technology, yet unlike ATM, the value of its contents is actually very low.”
Considering this evidence as a whole, it is clear that sometime around January 2005, and clearly before the priority date of 26 November 2006, a Live BoardTM was displayed publically at a real estate property. A person viewing this Live BoardTM would have readily ascertained a number of features of the sign being: a substantially weatherproof housing; a video display unit in the form of a high resolution LCD screen substantially housed within this housing; a power supply of some sort; the fact that some kind of distribution, delivery and installation is involved in controlling/preparing the sign; that information is uploaded to the sign in some way and subsequently displayed; and that the sign is somehow armed by turning it on. I also consider that a skilled addressee would consider there to be a computer processor of some sort inherently arranged within the housing for controlling the video display. Beyond these features, I cannot see any further features that would be disclosed by the public use of the Live BoardTM as evidenced by GKH-2.
In relation to system claim 1 there is no disclosure of the signboard comprising a housing that is lockable or a signboard communication module for coupling the signboard to a communications network. Regarding lockability, the opponent points to the disclosure discussing ATM technology and suggests this provides for an inherent disclosure of a lockable housing. I do not consider this disclosure amounts to a direction that would inevitably result in a lockable housing. Also not disclosed via the public use of the Live BoardTM is a central database and distribution centre adapted as claimed.
In relation to method claim 18 there is similarly no disclosure of a lockable housing or a signboard communication module. There is no disclosure of a method involving receiving at a central database an order from a real estate user and preparing the signboard by uploading based on information from said order, nor is there a disclosure of arming said signboard wherein arming activates downloading a digital advertisement from the central database that is subsequently displayed on the video display unit.
Briefly I also note that no single document of GKH-2 discloses more than that disclosed by way of the public disclosure via use of the Live BoardTM.
Therefore I find the claimed invention novel in view of GKH-2.
GKH-3
This document describes a smart interactive billboard for services, goods or the like that allows display of electronic advertisements and allows wireless interaction (via upload and download) of users with the billboard. The billboard can be:
“…installed on devices located at both stationary platforms such as buildings, roadsides, cinemas… and mobile platforms such as vehicles. The stationary platforms and mobile platforms can be indoors or outdoors.” (page 6 lines 25-28)
The billboard includes a display screen 561 (or 26) which can be a self-contained unit (page 13 lines 3-5), a communications interface for coupling to a communications network 505, a computer processor 501 and a power supply 509. The display screen may constitute:
“…the entire visible surface of the billboard or may only constitute a part thereof with the remainder being static or predetermined display. The display screen 26 may comprise any number of changeable displays including a matrix of light bulbs, LEDs alike, flat panel display using organic or inorganic devices, all projection devices, as are known in the art.” (page 7 lines 4-9)
Figure 1 shows a server 10, billboards 20, and client devices 30 which communicate with each other via wireless or wired communications, for example by SMS.
The server 10 contains interface hardware and software that allows it to receive, store and transfer to a billboard, information which is suitable to be displayed on the display screen:
“…the server 10, via the server interface 13 communicates with the billboard 20 via a wireless, infrared and/or wired connections, or the like. Wireless connections can include, for example, SMS, digital video broadcast (DVB), digital audio broadcase (DAB), wireless modem, wireless dialup network or the like. The server interface 13 of the server 10 contains interface hardware and software that allows the server 10 to receive and transfer information, vAds, compact certificates or the like to the billboard 20. The information can be stored in the database 15 of the server 10 to be used at a later time.
The server 10 can transmit information to the billboard 20 to be displayed on the display screen 26.” (page 8 lines 19-29)
Similarly, a user via a client interface such as a personal computer or mobile phone, can receive information from, or upload information to the billboard in the form of displayable advertisements. (page 10 lines 8-22)
Thus by way of this information, GKH-3 discloses a signboard control system which is adapted for use in marketing a real estate property including: a video display unit adapted to display digital advertisements; a computer processor for controlling the video display unit; a power supply; and a communication module for coupling the signboard to a communication network. Also disclosed is: a central database; the fact that some kind of distribution, delivery and installation is involved in controlling/preparing the sign; that information is uploaded to the sign and subsequently displayed; and that the sign is somehow armed by turning it on.
In relation to system claim 1, GKH-3 discloses that the central database (server) comprises a communication module and that is adapted to receive information, store information and transmit a signal to prepare the signboard. The disclosed system is inherently adapted to process information related to a real estate property. Also disclosed is a device separate to the server (a client user) that is adapted to upload information that is suitable for display as a digital advertisement.
Firstly, while I accept that it is inherent that for outdoor and mobile use on a vehicle the signboard will be substantially weatherproof and that a processor will be housed within a weatherproof housing, this does not amount to a disclosure of a substantially weatherproof housing that houses a video display unit and computer processor. Additionally there is no disclosure of a lockable housing.
Secondly, while it is clear that the server of GKH-3 is adapted to receive and transmit information, there is no clear and unmistakable direction to adaptation of the server to receive information via the communications network from a user. In particular, the disclosure identified above at [70] only appears to contain a direction as to a communication network adaptation between the server and billboard. This does not amount to a direction that the server is adapted to communicate with a user via this communication network.
Thirdly, I find no disclosure that could be attributed to a distribution centre as claimed. Notably, the claimed distribution centre is adapted to receive a signal containing information from a central database and to upload this information to the signboard. Most similar to the claimed action of a distribution centre within GKH-3 may be the client user which is adapted to upload information to the signboard, however there is no disclosure of the client user receiving, or being adapted to receive, a signal from the server.
In relation to method claim 18 there is similarly no disclosure of a substantially weatherproof housing that houses a video display unit and computer processor, or of a lockable housing. There is no disclosure of a method involving receiving at a central database an order from a real estate user and preparing the signboard by uploading based on this order. There is also no disclosure of arming said signboard wherein arming activates downloading of a digital advertisement from the central database that is subsequently displayed on the video display unit.
Therefore both claims 1 and 18 (and all dependent claims) are novel in view of GKH-3.
GKH-4
This document describes an intelligent real estate system including an intelligent real estate sign with an embedded processor, and a wireless communication system capable of receiving queries and programming instructions and for communicating with local and remote information sources and with controlling agents (abstract). The sign includes a power supply (column 3 lines 19-24) and may include an electronically activated display to display dynamic information. The electronic display and wireless communication system can each sequentially present sale relevant information such as “Sale Pending” or “Price Reduced” (page 5 lines 35-44). Via the wireless communication system a virtual tour may be provided which enables a client to navigate to appropriate links using a client device (column 6 lines 20-44). Additionally the system includes an electronic lock box separate to the sign that is hermetically sealed and waterproof. The electronic lock box may be networked wirelessly to a real estate office, controlling agent device or client device (figure 1). This lock box may for example, store a key which provides access to the real estate property (column 4 lines 10-28). The real estate sign is intended to perform all of the physical functions performed by a traditional real estate sign such as being placed in front of a house for sale (column 3 lines 8-19).
Also described (figure 3 and column 7 lines 29-66) is a process whereby the real estate sign receives an information request from a client device or controlling agent device and transmits this information to the device. Here a client or controlling agent transmits an information request pertaining to the real estate property to the signboard. The process determines whether the requesting device is authorised to receive the information. If not then a denial message is sent to the device. If the device is authorised to receive the information and the information is stored in the real estate sign then the sign transmits the information to the requesting device. If the information is not stored in the real estate sign then a request is sent by the sign to the controlling agent’s real estate office. After this point the requested information is transmitted to the real estate sign from the real estate office enabling the real estate sign to provide the information to the requesting device.
Therefore GKH-4 discloses a real estate signboard control system that, by performing the functions of a traditional sign in front of a property, will be substantially weatherproof. As the sign includes a processor I accept it to be inevitable that the processor will be housed in a weatherproof housing. The sign also includes a power supply and a communication module coupling to a communications network. Disclosed by way of the controlling agent’s real estate office is a central database capable of receiving a message from the signboard via the communications network. Also disclosed is the fact that some kind of distribution, delivery and installation is involved in controlling/preparing the sign; that information is uploaded to the sign and that information is displayed; and that the sign is somehow armed by turning it on.
In relation to claim 1, I find no disclosure of features such as a lockable housing, or a video display unit substantially housed within a housing. While an electronic lock box is provided in the described invention as being part of the real estate control system, this device is separate to the real estate signboard. Also, while an electronic display is disclosed, I see no basis to equate this display with a video display.
Regarding the central database of claim 1, it appears that the real estate office described in GKH-4 contains a communication module for coupling to the communications network, and that the database is adapted to receive a message, store information and transmit an electronic signal. However as was the case with GKH-3, there is no direction to adaptation of the real estate office to receive information via the communications network from a user. In particular, the disclosure identified above at [80] only appears to contain a direction as to a communication network adaptation between the real estate office and signboard. This does not amount to a direction that the real estate office is adapted to communicate with a user via this communication network.
I also find no disclosure that could be attributed to a distribution centre as claimed similarly to GKH-3 above. Again, most similar to the action of the claimed distribution centre are client user devices and controlling agent device of GKH-4 which can upload information to the signboard, however there is no disclosure of such devices receiving, or being adapted to receive, a signal from the real estate office.
In relation to claim 18, there is similarly no disclosure of a lockable housing or a video display unit substantially housed within a housing. There is no disclosure of a method involving receiving at a central database an order from a real estate user and preparing via uploading information based on this order. There is also no disclosure of arming said signboard wherein arming activates downloading of a digital advertisement from the central database that is subsequently displayed on the video display unit.
Therefore both claims 1 and 18 (and all dependent claims) are novel in view of GKH-4.
Inventive Step
The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Alphapharm [2002] HCA 59 at [41]; 212 CLR 411 at [41]; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293).
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3)
The problem
The specification at page 2 discusses traditional real estate signboards that display static information noting that in the past, an agent would provide a sign printer with details of the real estate property. The sign printer would print the sign and arrange for delivery to the property. These signboards do not include dynamic displays and conventionally there has been no need to have a system that included the transfer of “live” information between an agent or other real estate user and the signboard.
The specification then discusses the applicant’s own prior art device described in WO 2006/063393 which relates to a real estate signboard that includes a video display unit, computer processor, power supply, and wireless communication module. The specification also states that the present invention seeks to provide a system for marketing a real estate property that will overcome or ameliorate at least one of the deficiencies of the prior art.
The two independent claims are directly towards a real estate signboard control system, and a method for delivering a real estate signboard. In general they are both directed to the problem of preparing a real estate signboard for use. In accordance with the discussion of the background art above, it appears that the problem solved by the present invention is to provide an improved system/method for preparing a dynamic real estate signboard.
Furthermore, in accordance with the findings in AstraZeneca AB v Apotex Pty, I do not consider there to be any information forming part of the problem that is not s7 material. It is clear that it is known to use a dynamic display in a real estate signboard as discussed above under novelty. Thus it appears appropriate to consider obviousness in light of the problem I have identified.
The hypothetical person skilled in the art
In Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
At the priority date, the skilled addressees would include an electronic engineer of skill in the art of signage, and also a person involved in the manufacture, design or use of real estate signs. Evidence has only been filed by the opponent in the form of declarations of Mr Michael Joseph Hollingsworth and Mr Graham Kenneth Hood. Mr Hollingsworth is a managing director of the opponent: a company specialising in the design, manufacture and sale of signage including real estate signs. Mr Hood is an electronic design engineer at a company specialising in the design, manufacture and sale of electronic signage and related equipment. I accept that both of these experts can be considered persons skilled in the art in the context of the identified problem.
The prior art base (ascertain, understand and regard as relevant)
100.The opponent relies on the evidence raised under the ground of novelty to establish obviousness by submitting that each of the claims lacks an inventive step over any of these documents. The opponent also submitted that the claimed invention is obvious in view of the applicant’s own prior art WO 2006/063393.
101.According to subsection 7(3), documentary information relevant the assessment of inventive step must be information that the person skilled in the art, before the priority date of the claims, could be reasonably expected to have ascertained, understood and regarded as relevant.
102.GKH-2 establishes that the Live BoardTM of real estate agency Costa Koulis was made public via use at a particular real estate property. It follows that the nature of the disclosed public use naturally provides the ascertainability required by s7(3). Furthermore, in searching the problem identified above on the internet, a person skilled in the art could have been reasonably expected to find out about the Live BoardTM via the identified webpages. The webpages are clearly in the relevant art and discuss the use of video in a real estate signboard. I also note that given the webpages are all from the same website, there is clear motivation to combine them.
103.GKH-3, GKH-4 and WO 2006/063393 are all patent documents. While there is no evidence provided by the opponent as to the ascertainability of these documents, I make reference to the concept of ascertaining documents in the context of a diligent searcher seeking solutions to a problem that is well summarised in Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited[1997] APO 40. Here the Delegate of the Commissioner stated with reference to patent documents:
"A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art.”
104.Each of these patent documents deals with the same technical issues relating to the display of dynamic information on signage suitable for real estate use. I find that the person skilled in the art could reasonably have been expected to have found these documents.
105.Further, I see no reasons why GKH-2, GKH-3, GKH-4 and WO 2006/063393 would not have been understood or considered relevant to the problem. Thus all of this information forms part of the prior art base for consideration of inventive step.
Was the invention obvious?
Common General Knowledge
106.A definition of common general knowledge was provided by Aitken J in Minnesota Mining [1980] HCA 9 at [115]; 144 CLR 253 at 292:
“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 in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
107.The declaration of Mr Hollingsworth describes the operation of the business of ABC Photosigns Pty Ltd prior to November 2006. A customer wishing to have a real estate sign installed would place an order over the internet using a website. Details for the sign would be entered including size, and particular text and images to include (MJH at [4]). A layout artist would populate a template with this information and then send an electronic version to the customer via email for approval (MJH at [6]-[7]). After receiving the customer’s approval the sign was sent to a printer (MJH at [8]). The sign was either attached in a workshop to a supporting backing or, if the real estate property was located in another State or Territory, it was packed in a cardboard tube and sent to a workshop in the other location where it was attached to a support (MJH at [9]-[10]). In either case the signboard was then delivered to the property (MJH at [11]).
108.Importantly, there is nothing within the declaration of Mr Hollingsworth to suggest that this practice was common general knowledge in the art. At best, the declaration simply establishes that this was the practice of ABC Photosigns Pty Ltd. Nonetheless, Mr Hood makes particularly relevant comments in regard to the practice of a sign company in the context of real estate signs (GKH at [47] and [118] respectively):
“…based on my person knowledge of the real estate industry arising from the purchase and sale of various properties over many years prior to 2006, the features of claim 1 represent features of standard ordering and delivery methods that were used to order (amongst other things) standard (‘static’) real estate signboards,…”
“The Hollingsworth declaration confirms my view described above that all of the ordering and ‘preparation’ features of claim 1 were in standard use in the real estate industry before the priority date.”
109.Considering Mr Hood’s evidence I accept that as a purchaser and seller of real estate property, he would have some knowledge of the steps involved in ordering and receiving a real estate signboard from a signboard provider. While Mr Hood suggests that all “preparation” steps are standard in the art, he provides no evidence as to how he may be aware of the inner workings of a real estate sign business beyond standard interactions of a customer (being ordering and receiving a product) before the priority date. Therefore, based on the evidence before me, I cannot consider that this knowledge of standard practices in the art extends any further than online ordering and subsequent delivery of a real estate signboard at a property.
110.Mr Hood also describes the common general knowledge in the art of variable message signs. In this context the evidence appears to largely relate to the type of signs used to communicate traffic warnings wherein such signs include arrays of relatively low resolution light emitting elements (GKH at [29]). His evidence identifies that:
· Portable variable message signs were common (GKH at [10])
· The variable message sign would be delivered to the site and then information would be uploaded (GKH at [10])
· Upload of information to the variable message sign could be via physical connection with a portable computer or wirelessly over a mobile telephone network (GKH at [10])
· Wireless upload to the variable message sign could be via phone call to the sign or messaging using internet protocol (IP) messaging over GPRS. Remote access and changing of information on a sign was common (GKH at [11])
· Messages on variable message signs could be uploaded prior to delivery (GKH at [62])
· Messages on variable message signs could be loaded for display automatically or by automatic request for remote data download (GKH at [12])
· Variable message signboards could be animated (GKH at [14] and [29])
· Variable message signs were lockable and in weatherproof housings (GKH at [16])
· Electronic billboards with remote update capabilities were well known (GKH at [76])
Claim 1
111.Claim 1 requires a central database and distribution centre adapted to communicate wherein the distribution centre is further adapted to upload information to the signboard. The central database is also adapted to receive an order from a real estate user via a communications network. Starting with the problem of finding an improved system for preparing a dynamic real estate signboard, I see no basis to find that the person skilled in the art would have been directly led to the claimed invention in view of only common general knowledge. There is no discussion of the steps that the person skilled in the art would have taken, with the identified common general knowledge as the starting point, to arrive at the claimed invention involving a central database and a distribution centre adapted to receive and send electronic signals as claimed.
112.With the identified common general knowledge it is entirely reasonable that the person skilled in the art might consider uploading information to prepare a signboard from the central database or some other source, instead of a distribution centre. Alternatively, a person skilled in the art may consider receiving an order other than via the communications network at the claimed central database, for example the order may be received directly at a distribution centre or possibly elsewhere. Given these points I also see no basis that would direct, as a matter of routine, the person skilled in the art to arrange a central database to transmit a signal to prepare the signboard to a distribution centre.
113.Therefore, I find claims 1-17 involve an inventive step in view of common general knowledge.
Claim 18
114.Importantly, claim 18 is directed to a method for delivering a signboard and includes the feature of arming the signboard, wherein arming the signboard activates the signboard’s communication module to download from the central database via the communications network, a digital advertisement. Relevantly, the evidence of Mr Hood suggests in respect of variable message signs that messages could be loaded for display by automatic request for remote data download.
115.I consider that the evidence of Mr Hood falls short of establishing that the person skilled in the art would have been directly led to the feature of activation of download by arming the signboard. The fact that download could be triggered as automatic could mean for example, that software running a timer within the signboard activates a communication module to download data. This does not directly lead the skilled addressee to use arming of the signboard as a trigger for downloading information for display.
116.Therefore, I find claims 18-24 involve an inventive step in view of common general knowledge.
GKH-2
117.In accordance with my discussion above in regard to novelty, I consider GKH-2 demonstrates disclosure of all of the features of claims 1 and 18 except for the features of:
·A lockable housing
·A signboard communication module for coupling the signboard to a communications network
·Receiving at a central database an order from a real estate user and preparing the signboard by uploading based on information from said order
·A central database and distribution centre adapted as claimed
·Arming said signboard wherein arming activates downloading a digital advertisement from the central database that is subsequently displayed on the video display unit.
118.The identified common general knowledge demonstrates that a number of these features would have been obvious. Firstly, it appears routine to provide a lockable housing which would enable secure access to electronic (and somewhat valuable) devices contained within the housing. Similarly, it appears common in the art to communicate remotely with animated electronic signboards such as variable message signs and electronic billboards, such communication requiring a communication module as part of the signboard. Lastly, the evidence demonstrates that it was common in the art to order a static real estate sign online and have the sign prepared based on this order, this basic process being clearly equally applicable to an electronic sign with a video display.
119.However for similar reasons to those discussed above in relation to common general knowledge alone, I do not consider the person skilled in the art would be directly led to the adaptations of the central database and distribution centre of claim 1, nor the features of claim 18 of arming of the signboard activating the communication module of the signboard to download a digital advertisement from the central database.
120.Therefore, I find claims 1-24 involve an inventive step in view of GKH-2.
GKH-3 and GHK-4
121.In accordance with my discussion above in regard to novelty, I consider GKH-3 and GKH-4 discloses all of the features of claims 1 and 18 except for the features of:
·A lockable housing
·A video display substantially housed within the housing
·Receiving at a central database an order from a real estate user and preparing the signboard by uploading based on information from said order
·A central database adapted to receive information via the communications network from a real estate user.
·A distribution centre adapted to receive information in an electronic signal from the central database and upload this information to the signboard
·Arming said signboard wherein arming activates downloading a digital advertisement from the central database that is subsequently displayed on the video display unit.
122.Again, for similar reasons to those discussed above in relation to common general knowledge alone claims 1 and 18 are not obvious in view of either of these documents.
123.Therefore, I find claims 1-24 involve an inventive step in view of GKH-3 or GKH-4.
WO 2006/063393
124.As noted earlier in this decision, this application is the “parent application” of the present application and is prior art for the purpose of assessing inventive step. This document discloses a real estate signboard control system and method comprising: a substantially weatherproof lockable housing; a video display within the lockable housing adapted to display digital advertisements; a computer processor within the housing; a power supply; a signboard communication module; a central database coupling via a communications network with the signboard adapted to store information and transmit a signal to the signboard; and installation of the signboard at a real estate property (page 2 lines 6-13, page 3 line 13, page 4 lines 29-30, page 6 lines 20-30).
125.As was the case with the other evidence, there is no disclosure of:
·Receiving at the central database an order from a real estate user and preparing the signboard by uploading based on information from said order
·A central database adapted to receive information via the communications network from a real estate user
·A distribution centre adapted to receive information in an electronic signal from the central database and upload this information to the signboard
·Arming said signboard wherein arming activates downloading a digital advertisement from the central database that is subsequently displayed on the video display unit.
126.Once again, for similar reasons to those discussed above in relation to common general knowledge alone claims 1 and 18 are not obvious in view of this document.
127.Therefore, I find claims 1-24 involve an inventive step in view of WO 2006/063393.
Conclusion
128.The opposition is not successful. I find the claims constitute a manner of manufacture, are novel, and involve an inventive step.
Costs
129.The opponent has been unsuccessful and I can see no reason why costs should not follow the event. I will award costs in accordance with Schedule 8 of the Patent Regulations 1991 against them.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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