Aussie L.L.C. Pty Ltd v Ericsson Australia Pty.Ltd - [2003] APO 20

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Aussie L.L.C. Pty Ltd v Ericsson Australia Pty.Ltd

Details

AGLC: Aussie L.L.C. Pty Ltd v Ericsson Australia Pty.Ltd [2003] APO 20
Case: [2003] APO 20
Decision Date: 2 May 2003

CaseChat Overview and Summary

In the matter of patent application number 697560 by Aussie L.L.C. Pty Ltd, the applicant opposed by Ericsson Australia Pty Ltd under Section 59 of the Patents Act 1990, the dispute centred on the novelty and inventive step of claim 1. The central issue was the interpretation of the term "subscriber identification module" and the scope of "switch means" as used in claim 1. Additionally, the court had to determine if the invention was novel and inventive in light of the prior art.

The court first addressed the interpretation of the term "subscriber identification module," ultimately deciding that at the priority date, the term likely referred to a passive memory device rather than an active one. Regarding "switch means," the court found that the term should not be limited to mechanical switches and could encompass electronic ones as well. The court also interpreted the phrase "accessible to the user and adapted for the user" to mean that the user must be able to access the switch means to select one of the modules without any additional temporal constraints.

On the issue of novelty, the court found that claim 1 was anticipated by prior art, specifically the Weiner, Nokia, and Casio patents. The court concluded that the invention was not novel even when considering the applicant's preferred interpretation of the term "subscriber identification module." In terms of the inventive step, the court found that while the combination of certain features was common general knowledge, there was insufficient evidence to establish that such switch means would be user-accessible. Therefore, the invention of claim 1 was considered inventive in light of the common general knowledge at the relevant time. However, the court ultimately found that the invention lacked an inventive step in light of the prior art citations.

The court concluded that claim 1 was neither novel nor inventive, granting the applicant 60 days to file proposed amendments overcoming the grounds of opposition. Costs were awarded to the opponent as they were successful in their opposition.

Orders