Aussie L.L.C. Pty Ltd v Ericsson Australia Pty.Ltd
[2003] APO 20
•2 May 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 697560 in the name of Aussie L.L.C. Pty Ltd
Title: Improvements Relating to Mobile Phones
Action: Opposition by Ericsson Australia Pty Ltd under s 59 of the Patents Act 1990
Decision: Issued 02 May 2003.
Abstract
The invention relates to digital mobile phones to which a plurality of Subscriber Identification Modules, or SIMs, are attached.
The opposition, which was directed to the novelty and inventive step of claim 1, was successful.
The applicant sought to have evidence from the opponent's declarants excluded because they were thought to be over-qualified. This argument was rejected, and the evidence was considered on its merits (Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 distinguished).
The applicant was given the opportunity to propose suitable amendments to overcome the deficiencies identified.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 697560 by Aussie L.L.C. Pty Ltd and opposition under Section 59 of the Patents Act 1990 by Ericsson Australia Pty Ltd.
BACKGROUND
Patent application 697560 in the name of Aussie L.L.C. Pty Ltd (hereinafter referred to as Aussie) was filed on 13 December 1996 by Newcom Technologies Pty Ltd (Newcom). The patent derives priority from provisional application PN7551, which was filed on 15 January 1996. The patent application was advertised accepted on 8 October 1998, and assigned to Aussie on 3 July 2001.
Ericsson Australia Pty Ltd (hereinafter referred to as Ericsson) filed notice of opposition on 8 January 1999 followed by a Statement of Grounds and Particulars on 6 April 1999. After several unopposed extensions of time, evidence in support was completed on 4 February 2000. Aussie was due to serve its evidence in answer by 4 May 2000. After several extensions of time, this was served on 9 March 2001. The evidentiary stage was completed by the filing of evidence in reply on 7 June 2002.
The matter was set down for a hearing on 25 February 2003. The applicant was represented by Mr Howard Schulze, patent attorney of the firm Collison & Co, Adelaide, who appeared by telephone. The opponent was represented by Mr Peter Franke, patent attorney of the firm Watermark, Sydney, assisted by Mr Simon Ellis, also of that firm.
THE SPECIFICATION
The invention relates to digital mobile phones to which a Subscriber Identification Module (SIM) is fitted. A SIM is allocated to each user of a mobile telephone network, and stores information such as the subscriber's identification number, which identifies the user to the network. In reference to currently available phones, the specification states that the SIM is not readily accessible for removal and replacement with an alternate SIM card, as this typically involves removing the back cover and/or battery, replacing the module, and then replacing the battery/cover.
The inconvenience and effort involved in switching SIMs discourages users from changing networks, and limits their ability to take advantage of lower prices or better access from another network provider.
One solution to this problem is provided at lines 20 – 24 on page 3 of the specification which states:
“According to one form of the invention there is provided a mobile of the type having a subscriber identification module wherein there are provided at least two subscriber identification modules and switch means accessible to the user and adapted for the user to select one or other of the modules.”
However, the specification also contemplates another solution, which comprises an external holder attachable to an existing phone and adapted to take at least two SIMs. It is this embodiment which forms the main focus of the specification, and to which the majority of the claims are directed.
The specification ends with nine claims. Claims 2 to 9 are directed to an external holder, and the opponent had previously informed the applicant that they did not wish to contest these claims at the hearing. Analysis of the evidence argued at the hearing confirms that the invention of claims 2 to 9 is not anticipated by this material.
Claim 1, the only claim under dispute, reads as follows:
1 "A digital mobile phone of a type having a subscriber identification module wherein there are provided at least two subscriber identification modules and switch means accessible to the user and adapted for the user to select one or other of the modules."
EVIDENCE
10. The evidence in support from Ericsson consists of a statutory declaration by Rodney A. Kennedy, head of the Telecommunications Engineering Group at the Research School of Information Science and Engineering, ANU. Mr Kennedy states that his current work involves research in areas such as multi-user detection, multi-access mobile communications and signal processing aspects of telecommunications. Appended to the declaration is a selection of patent and non-patent literature on which the opponent’s case relies. These exhibits are referred to as RAK-1 to RAK-11.
11. The applicant's evidence in answer consists of ten statutory declarations by:
Keith Benson, Managing Director of Newcom, and inventor of the patent in suit;
Steven B. Fiedler, who is employed as an electronic technician by ElectroCad Australia. Mr Fiedler states that he has had experience with "…Smart Card and Magnetic Stripe Card microprocessor based systems for a variety of devices requiring external electronic access";
George Hinic, who currently works as a Project Management and Contract Administration consultant. Mr Hinic helped establish Newcom with Mr Benson ;
Brian K. Hodge, Managing Director of Beta-Com Pty Ltd which is an engineering consultancy firm for the telecommunication industry;
John Gray Hogarth, a Director of Newcom.
Graham C. Kelly, who has experience in the design and implementation of communication, telephone and electronic systems. He is currently employed by Kelly Network Consulting Pty Ltd as a senior consultant;
John A. Leske, who currently consults in the fields of cellular systems and data communications protocols for DSpace Pty Ltd in Adelaide. He has previously worked on a project for Newcom;
Dr. Robyn A. Lindley, an Associate Professor in the School of Information Technology and Computer Science, University of Wollongong. She has had experience in survivable network analysis for telecommunications networks, smart card systems design and GSM wireless application protocol network design;
Peter Sargeant, currently employed by AEC Products as a general manager. Mr Sargeant states that he has "…13 years experience in the field of mobile telephone repair, maintenance and sales support…";
Leon Vandenberg, Executive Vice President of Newcom.
12. The evidence in reply consists of a single declaration by Abbas Jamalipour, a senior lecturer in the School of Electrical and Information Engineering, University of Sydney. Exhibited to the declaration are documents AJ-1 to AJ-7.
I will discuss the evidence in more detail, where appropriate, in my decision.
DECISION
13. A considerable amount of the evidence and the submissions in this matter concerned the interpretation of claim 1. I will need to resolve these issues due to their potential impact on novelty and inventive step.
(i) a subscriber identification module
14. Mr Franke contended that the term “subscriber identification module” should be construed in a broad sense as a memory device for storing a subscriber’s identity, and should not be limited to a “smart card” which distinguishes itself from a simple memory device by virtue of an in-built central processing unit.
Mr Schulze responded that “…there was never any intention to have a meaning other than that which was broadly accepted and understood…” in Australia at the priority date. The subscriber identification module “…is a complex device, an active device, which includes a microprocessor of some sort and various algorithms embedded so that there can be appropriate security maintained”.
15. The question that must be answered is whether the term “subscriber identification module” has a plain meaning to the skilled addressee. The declarants provided evidence relevant to the interpretation of the expression. Mr Leske at paragraph 25 states that:
“…in fact it is fundamental to the mobile telephone system (GSM and any derivatives also using SIMS) that the SIM has processing functions, contains secret algorithms, performs the subscriber authentication function, and is designed to be removable”.
16. In her review of the specification Dr Lindley states at paragraph 9 that:
“I understand that a “subscriber identity module” (SIM) is a plug-in “smart card” developed specifically for pan-European GSM (Groupe Speciale Mobile) mobile equipment that contains all of the necessary information to uniquely identify a mobile network subscriber and to securely manage GSM network access and to prevent misuse”.
17. These comments suggest that one fundamental component of a SIM is a microprocessor. However, the inventor’s own evidence demonstrates that this was not always the case. Paragraph 26 of Mr Benson’s declaration states:
“That at that time all telephones in the marketplace were what they called phase two GSM phones where the SIM card did not have any interaction with the operation of the phone and acted completely as a slave, just a slave to the main processor of the telephone. Subsequent to that in 1997 they changed the standard to phase two plus which then gave the SIM card the ability to control the user machine interface of the phone itself, which by its very nature gave capability for other network (sic) such as banking, ticketing and other third party application networks and the Internet including interaction directly with the SIM card connected to the phone. This was always my original contemplation.”
18. This passage clearly indicates that as mobile phone technology has evolved, so to has the purpose and capabilities of a SIM card. At the priority date of the application, it seems more likely than not that the meaning of the term SIM to a person skilled in the art would be the meaning that Mr Franke has ascribed to the term, that is, a passive memory device for holding subscriber identification data.
19. This view is also consistent with my reading of the specification, which I note fails to provide an exact definition either of the function, logic or physical characteristics of the subscriber identification module. However, paragraph 3 on page 2 of the description does clarify that the module is “…for use by a commercial entity providing a network to ensure that the digital phone is connected to the commercial entities network”. This tends to suggest that the module is merely a memory device that stores information such as the subscriber's identification number, and the networks and countries where the user is entitled to service. There is no suggestion in the specification that the SIM is an “active” device as argued by Mr Schulze.
(ii) switch means
20. Mr Schulze argued that in the context of the specification, it was clear that the scope of the term “switch means” was limited to mechanical switches that could be manually activated. The opponent insisted that a “switch means” merely defines a “means for switching”, and that various forms of switching were contemplated by the specification. I was referred to page 5, lines 17 – 21 of the description which discloses, as an option:
“…an electronics (sic) switch operated by the logic so that the user of the phone no longer has to make a decision as to which network to choose but this will be made on the basis of either cost or best signal as the case might be which can previously selected for the logic to choose”.
21. To my mind, the specification has clearly asserted that the switch means may take various forms, either mechanical or electronic. There has been no disclosure that the switch means must be purely mechanical. I believe that this is enough to resolve the matter, and that the term “switch means” should not be artificially limited merely because such an interpretation is advantageous to the applicant.
(iii) accessible to the user and adapted for the user
22. Mr Schulze explained that one of the advantages of the invention is the fact that it is “…user accessible, and that term, in the context of a digital mobile phone, means something where the user implicitly has immediate, or reasonably immediate access, because that is the problem we’re solving”. As I understand it, the applicant was asserting that the phrase “accessible to the user and adapted for the user” indicated that the switch means must meet the requirement of being manually actuated in a timely manner.
The opponent disputed this interpretation, noting that the terms “accessible” and “adapted” are not defined in the specification, and that the patent was wholly silent on the “temporal quality” that the applicant was seeking to import into the claim.
23. Looking solely at the claim, the words used clearly state that the user must be able to access the switch means to select one of the modules. Despite the applicant’s assertion, I see no reason to depart from the plain meaning of the words. Unfortunately, the plain meaning is not the meaning the applicant had intended.
Novelty
24. The law regarding novelty has been extensively reviewed in judgments by the Federal Court of Australia in recent years. These judgments indicate that the basic test for anticipation is the “reverse infringement” test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is possessed by the prior disclosure (see Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367).
25. A feature is essential if the applicant has made it an essential feature by the terms of the claim when properly construed (see Catnic Components Ltd v Hill and Smith (1982) RPC 183). I do not think there is any doubt that every feature of claim 1 is essential, and the opponent did not dispute this view.
I will discuss each of the alleged citations presented at the hearing in turn.
United States Patent Specification 4677653 A (Weiner et al.), 30 June 1987 (referred to as RAK-2)
26. The Weiner patent discloses a digital cellular telephone which can access more than one cellular phone network, thus taking advantage of different time rates and access rates. The user may activate a switch to individually select one of several Number Assignment Modules (NAM’s), each of which has its own unique telephone number.
27. Mr Schulze questioned the relevance of this citation, suggesting that a NAM, a passive memory device, could not be considered equivalent to an active SIM . The opponent did not contest this view, but reiterated their belief that claim 1, when properly construed, does not put this in issue. I agree, and reject the applicant's submission that the citation need recite an active SIM.
In light of this finding, I have come to the conclusion that the citation anticipates the invention of claim 1.
European Patent Specification 586081 A1 (NOKIA MOBILE PHONES LTD.), 9 March 1994 (referred to as RAK-3)
28. The citation discloses a digital cellular phone in which information from a number of SIM’s is used in accordance with a predetermined priority allocation. Lines 43 to 46 of column 3 state that the prioritisation “…may be modified manually by the user, e.g. by menu selection using the user interface (i.e. keypad and display) of the radio”.
29. Mr Schulze argued that the ability to modify a prioritisation scheme could not be considered a “switch means” which would “…allow changes on the fly”. In response, Mr Franke submitted that claim 1 does not put forward the issue of “changes on the fly” and that any form of switching between SIMs is necessarily going to involve some sort of preselection.
30. I find the opponent’s view more compelling. I have already determined that the term “switch means” as used in claim 1 should not be read as requiring a certain level of immediacy, and feel that the applicant is attempting to introduce a limitation that the plain meaning of the claim does not suggest. Furthermore, the concept of “preselection” clearly falls within the scope of a “switch means” as envisaged by the applicant in their specification.
31. It is worthwhile observing that even if I was to take the applicant's preferred meaning of the term SIM into account, this citation would still render the invention of claim 1 not novel.
Accordingly, I find that claim 1 is anticipated by the Nokia patent.
European Patent Specification 690645 A1 (CASIO COMPUTER COMPANY LIMITED), 21 June 1995 (referred to as RAK-4)
32. The document discloses a digital PHS (Personal Handy Phone System) terminal which may include a plurality of detachable memories in which identification codes are stored. The user may select which identification code (telephone number) is used at any particular time.
The citation clearly deprives claim 1 of novelty.
European Telecommunication Standard ETS 300509, published September 1994 (referred to as AJ-7)
33. This document describes the functional characteristics of SIMs in a GSM system. Section 7, entitled “Mobile Equipment accepting both ID-1 and Plug-in SIMs” is particularly relevant and states in part:
“An ME [mobile equipment, or handset] able to accept a Plug-in SIM may also have provision for accepting an ID-1 [credit-card sized] SIM. If both SIMs are present the ID-1 SIM takes precedence.”
34. The citation clearly discloses a mobile phone in which there are at least 2 SIMs. It is also clear from the standard that an essential requirement of the GSM system is that only 1 SIM can be active at a time. In the applicant’s written submissions, they submit that “…once it is conceded that a telephone contains two SIMs or adapted to receive two SIMs, it therefore follows that there is a disclosure of some form of switching means”. I accept this reasoning, but note that this switch means does not appear to be user accessible. In fact, the document strongly suggests that switching is automatically controlled by the ME, and cannot be altered. There is no provision for the user to select between the Plug-in SIM and the ID-1 SIM. Accordingly, I conclude that the invention of claim 1 is not anticipated.
Inventive Step
35. According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge, or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
36. The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge (Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253).
37. The applicant argued that the evidence provided by Dr Kennedy and Dr Jamalipour could not be used to establish the common general knowledge as they were “over-qualified”. I was referred to Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 in support of this contention. It was also suggested that the evidence of Dr Jamalipour “should be rejected outright” because he was not in Australia at the priority date of the patent. Mr Schulze directed my attention to exhibit AJ-1, the resume of Dr Jamalipour, which states that he worked at Nagoya University, Japan from October 1994 until his arrival in Australia in May 1998.
38. In response, the opponent queried the independence of Messrs Benson, Hinic, Hogarth, Leske and Vandenberg, who have either consulted for or worked with Aussie or its predecessor Newcom. Concerns were also expressed about the relevance of much of the evidence, which was directed towards the embodiment in which the SIMs reside in an external holder, not the digital mobile phone.
39. I consider that the current case may be easily distinguished from Abbott (supra). That case dealt with an expert whose comments related to a field which was entirely theoretical in Australia at the relevant time. It was clear that the expert’s opinion could not represent the relevant common general knowledge of an unimaginative non-inventive technician. This contrasts markedly to the present situation, in which digital mobile telephony was well established in Australia at the priority date, and the technical and commercial aspects were understood by many. Consequently, I do not accept that the opponent’s declarants are “over-qualified”.
40. The applicant is correct in submitting that Dr Jamalipour was not in Australia at the relevant time. However, I do not believe his evidence should be discounted in its entirety. In my opinion, mobile telephony, and in particular GSM, can be considered an art of an international nature. There are some authorities which suggest that there may be special instances where the common general knowledge in Australia is, or should be, regarded as being the same as elsewhere in the world (Joseph Lucas (Batteries) Ltd v Gaedor Ltd [1978] RPC 297, Genentech Inc’s (Human Growth Hormone) Patent [1989] RPC 613). I consider this to be the case here. Accordingly, I will consider Dr Jamalipour’s evidence, even though I accord it less weight than that of Dr Kennedy.
41. I agree with Mr Franke’s assessment of the applicant’s evidence, and accept that several of the declarants are not disinterested parties. Of all of the evidence filed by Aussie, I accord Dr Lindley’s material the greatest weight, due to her knowledge, experience and independence.
42. In relation to the evidence, and especially that of Dr Lindley at paragraph 87, I think I must accept that the following salient features were common general knowledge:
digital mobile phones having provision for 2 or more SIMs
means to switch between the SIMs
the switching means could be automatic
43. I am also satisfied that the combination of these features would have been obvious, as any phone which incorporates more than one SIM must necessarily include some form of switch means to satisfy technical requirements. However, I am not satisfied that the opponent has provided sufficient evidence to establish that such a switch means would be user accessible. Accordingly, I consider that the invention of claim 1 is inventive in light of the common general knowledge at the relevant time.
44. I will now turn to the prior art to assess inventive step. I do not think there is any doubt that the various documents which Ericsson are relying upon would have been ascertained, understood and regarded as relevant by the person skilled in the art. The applicant did not dispute this view.
45. The three patent citations, Weiner, Nokia and Casio, each disclose a digital mobile phone in which the user may freely select which SIM is to be used at any particular time. Accordingly, I find that the invention of claim 1 is not inventive in light of these citations. With regard to the European Telecommunication Standard ETS 300509, I believe that this document leads the person skilled in the art away from the invention, as it suggests that SIM card selection is automatic and unalterable by the user. I conclude that claim 1 has an inventive step in light of this document.
CONCLUSION
46. I have found that the invention defined by claim 1 is not novel or inventive. Even if I was to agree with the applicant's preferred interpretation of the term SIM, claim 1 would be anticipated by the Nokia patent. As there is clearly patentable subject matter within the complete specification I allow the applicant 60 days from the date of this decision in which to file proposed amendments overcoming the grounds of opposition.
COSTS
47. Costs normally follow the event and I see no reason to depart from this in this case. The opponent has been successful in their opposition and consequently I award costs against the applicant.
R. W. J. Finzi
Delegate of the Commissioner of Patents
02 May 2003
Patent attorneys for the applicant: Collison & Co, Adelaide
Patent attorneys for the opponent: Watermark, Sydney
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