Australian Postal Corporation v David John Holton - [2010] APO 22

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Australian Postal Corporation v David John Holton [2010] APO 22
Innovation Patent: 2007100419

Title: Method and system for electronic delivery of essential mail items.
Patentee:David John Holton.

Opponent:                  Australian Postal Corporation.
Delegate:  M. G. Kraefft
Decision Date:            30 September 2010
Hearing Date:              23 June 2010
Catchwords:                INNOVATION PATENT – opposition under Section 101M – the claims lack novelty and innovative step – determination of priority date sought but not required as all relevant prior art in evidence predated the earliest claimed priority date – actual costs sought by the patentee beyond those specified in Schedule 8 but not entertained – opponent successful in this opposition - costs in accordance with Schedule 8 awarded against the patentee.

Representation: Patentee: Dr Mark Summerfield, patent attorney of Watermark.
Opponent:Mr Ian Horak of counsel, instructed by Mr Anthony Selleck, patent attorney of Allens Arthur Robinson.

AUSTRALIAN PATENT OFFICE
Innovation Patent: 2007100419.

Title: Method and system for electronic delivery of essential mail items.
Patentee:David John Holton.

Decision Date: 30 September 2010
DECISION
Claims 1-5 lack novelty over the Keeling specification and over the e-Boks system. Similarly claims 1-5 lack an innovative step over the same prior art.
There may be patentable subject matter in the innovation patent specification. The patentee is allowed sixty (60) days from the date of this decision to propose suitable amendments to overcome the above findings, otherwise the innovation patent may be revoked.
Costs in accordance with Schedule 8 are awarded against the patentee, David John Holton.
REASONS FOR DECISION

David John Holton (“the patentee”) filed an innovation patent application 2007100419 on 21 May 2007. The application is a divisional application of an international application, PCT/AU2007/000054 (WO2007/079550), filed on 19 January 2007. The PCT application in turn claims priority from two Australian provisional applications 2006900287 and 2006901450 filed on 19 January 2006 and 21 March 2006, respectively.
Following examination, the innovation patent was certified on 28 August 2007. Notice of certification was published on 6 September 2007.
Australian Postal Corporation (“the opponent”) filed a notice of opposition and a statement of grounds and particulars on 14 May 2008. The evidentiary stages of evidence-in-support, evidence-in-answer and evidence-in-reply were completed on 21 April 2009.
On 30 April 2009 the patentee filed an application to serve further evidence on the opponent. That application was allowed on 29 May 2009 and the patentee subsequently served further evidence on 26 August 2009. The opponent was then given the opportunity to serve evidence-in-response to the patentee’s further evidence. The evidence-in-response was served on 6 November 2009.
A hearing was held in Canberra on 23 June 2010. Dr Mark Summerfield, patent attorney of Watermark, represented Mr Holton. Mr Ian Horak of counsel, instructed by Mr Anthony Selleck, patent attorney of Allens Arthur Robinson, represented Australian Postal Corporation.
SPECIFICATION
The specification of innovation patent 2007100419 describes the invention as relating to a method and system for electronically delivering financial statements, invoices and other essential mail items. There are stated to be several problems with conventional mailing of invoices and statements. These problems include delivery delays, financial cost, the environmental impact of paper documents, delays in cash flow to the service provider, and locating customers whose address may have changed.
Electronic delivery is also stated to have problems. The most significant problems relate to security and trust. Many consumer concerns in these areas are said to arise from the technical limitations of existing online delivery systems. The very openness of email for example, with easy and rapid communications between persons around the globe, is stated also to be its greatest weakness. Unsolicited commercial email (“spam”) is rife and in many cases the senders of spam seek to conceal their real identity. As a result, illegal activities such as Internet banking fraud and other scams are not uncommon.
Web-based interfaces of service providers (e.g. telephone or utility companies or banks) enable users to retrieve or view statements or pay invoices. A significant disadvantage of these systems is stated to be the resulting number of user names, passwords and other security information required by consumers to access the sites of different service providers.
The specification accordingly describes a need to provide for electronic delivery of essential mail items that overcome the above difficulties. In particular, the specification indicates it would be highly desirable to provide a system that is operable over publicly accessible data networks to maximise convenience and accessibility while not compromising security and avoiding the drawbacks of existing email systems.
The specification ends with five claims, which read as follows:-
1. A method of providing an electronic mail service for the delivery of essential mail items to a subscriber in electronic form, the method including the steps of:
providing a delivery server having an associated database containing subscriber details;
the delivery server receiving from the subscriber a nomination of at least one service provider from which the subscriber wishes to receive essential mail items in electronic form, and storing said nomination in the database in association with the subscriber details;
establishing a trusted communications channel between the delivery server and a service provider computer system;
the delivery server receiving essential mail data from the service provider via said communications channel;
the delivery server verifying that the subscriber wishes to receive an essential mail item corresponding with the essential mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and
in the event that said verification is successful, the delivery server delivering the essential mail item to the subscriber in electronic form.
1. The method of claim 1 wherein the subscriber is allocated a unique subscriber identifier.
3.The method of either claim 1 or claim 2 wherein the step of the delivery server verifying that the subscriber wishes to receive the essential mail item includes checking the subscriber nominations in the database to confirm that the subscriber indeed wishes to receive essential mail items from the service provider.
1. A delivery server for the delivery of essential mail items to a subscriber in electronic form, the delivery server including:
a database containing subscriber details including at least one nominated service provider from which the subscriber wishes to receive essential mail items in electronic form;
means for establishing a trusted communications channel with a service provider computer system;
means for receiving essential mail data from the service provider via said communications channel;
means for verifying that the subscriber wishes to receive an essential mail item corresponding with the essential mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and
means for delivering the essential mail item to the subscriber in electronic form, in the event that said verification is successful.
1. A method of a subscriber receiving an essential mail item from a service provider, the method including the steps of:
the subscriber transmitting, to a delivery server having an associated database containing subscriber details, a nomination of at least one service provider from which the subscriber wishes to receive essential mail items in electronic form, wherein the delivery server stores said nomination in the database in association with the subscriber details; and
the subscriber subsequently receiving an essential mail item from the nominated service provider in electronic form,
wherein delivery of the essential mail item to the subscriber is effected by the delivery server executing the steps of:
establishing a trusted communications channel with a service provider computer system;
receiving essential mail data from the service provider via said communications channel;
verifying that the subscriber wishes to receive an essential mail item corresponding with the essential mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and
in the event that verification is successful, delivering the essential mail item to the subscriber in electronic form.
EVIDENCE
The opponent’s evidence-in-support consists of statutory declarations by Mr Giovanni Belli, an employee of Post Danmark A/S, and Mr Christopher Bird, patent attorney of Allens Arthur Robinson. At the time of his declaration, Mr Belli’s role at Post Danmark was in development, operation and sales of electronic communication solutions. In his declaration Mr Belli describes that organisation’s “e-Boks” system. Mr Bird discusses, in his declaration, the interpretation of the invention claimed in the innovation patent, the correctness of the claimed priority dates, and exhibits several items of prior art to conclude the claimed invention lacks novelty and lacks an innovative step.
The patentee’s evidence-in-answer consists of a statutory declaration by Dr Roger Clarke. He has some 40 years of professional, consultancy and academic experience in the information technology industry, including information systems application development, and a wide range of Internet issues, such as security and trust issues and consumer behaviour. In his declaration Dr Clarke provides a detailed analysis of the claimed features of the innovation patent against the prior art raised in the opponent’s evidence-in-support, highlighting differences to conclude the innovation patent is novel and has an innovative step. Dr Clarke also comments on the relevant person skilled in this art and the background knowledge such person would possess.
The opponent’s evidence-in-reply consists of statutory declarations by Mr Belli and Dr Roger Kermode. In this evidence, Mr Belli provides further details in respect to Post Danmark’s electronic mail solutions and the e-Boks system in particular, during the period 2001-2003. Dr Kermode has some 20 years of experience in the information technology industry. At the time of his declaration Dr Kermode was providing consulting services in technology commercialisation with particular focus in Internet and other computer network technologies. In his evidence, Dr Kermode challenges the relevance of Dr Clarke’s background as making him a person skilled in the art of the invention. Dr Kermode also challenges most of Dr Clarke’s analysis and conclusions on the novelty and innovativeness of the claimed invention.
The patentee’s further evidence consists of a second statutory declaration by Dr Clarke. This declaration is largely responsive to Dr Kermode’s and Mr Belli’s evidence-in -reply. Dr Clarke mainly expands on the differences between the innovation patent’s recipient-driven system and the prior art’s sender-driven systems. More specifically, Dr Clarke makes distinctions between nominations of senders by recipients as against consent by recipients in response to consent requests from senders. Other distinctions include, for example, the nature of a user compared with a subscriber, the nature of the trusted communications channel in the innovation patent specification compared with the prior art, and the allocation of customer identifiers in the innovation patent specification compared with the prior art.
The opponent’s evidence-in-response consists of a second statutory declaration by Dr Kermode. In the main, Dr Kermode states that the differences discussed by Dr Clarke are within the scope of the claims of the innovation patent or are immaterial differences.
APPLICABLE LAW
Section 101M of the Patents Act is the pertinent section in this case. That section is expressed in the following way.
S. 101M. The Minister, or any other person, may, in accordance with the regulations, oppose an innovation patent that has been certified and seek the revocation of it, on one or more of the following grounds of invalidity, but on no other:
(a) that the patentee is either:
(i) not entitled to the patent; or
(ii) entitled to the patent but only in conjunction with some other person;
(b) that the invention is not a patentable invention because it does not comply with paragraph 18(1A)(a) or (b);
(c) that the invention is not a patentable invention under subsection 18(2) or (3);
(d) that the complete specification does not comply with subsection 40(2) or (3).
Paragraphs 18(1A)(a) and (b) outline the requirement for an innovation patent as claimed in any claim, when compared with the prior art base, to be novel and involve an innovative step, respectively.
In referring to several earlier decisions in respect to novelty, the Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, [2000] FCA 316, (2000) 46 IPR 553. at [67], states that what the authorities contemplate 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.
The H Lundbeck A/S v Alphapharm Pty Ltd decision, [2009] FCAFC 70, describes the sufficiency of an enabling disclosure to deprive a claimed invention of novelty. At [183] for example:
“… the disclosure is not complete but it is sufficient to enable the skilled addressee, in the ordinary course and without invention, to add what is missing in the prior publication to obtain the claimed invention. The term “enabling disclosure” may also be apposite to disclosure to the skilled addressee of an asserted prior use: whether what the skilled addressee observes on inspection is sufficient to enable him or her to comprehend the complete invention, …, that is, whether it is sufficient to amount to a disclosure of the invention.”
In respect to prior use, the Jupiters Ltd v Neurizon Pty Ltd decsion, [2005] FCAFC 90, at [143] and [144], discusses at least two examples to assist in making such a finding. The first is of access to a light system by maintenance contractors who were free to examine it. Although the contractors would not have had access to the control panel, a thorough investigation, together with some inferences, would have led to an understanding that the extended green period was provided and of the mechanism by which it was provided. The second is where inspection of a particular machine made apparent the character of the invention.
In respect to innovative step, the Federal Court decision Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd, [2009] FCAFC 81, discusses Subsection 7(4) of the Patents Act in some detail. This subsection is recited below.
S. 7(4). For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
The Dura-Post (supra) decision, at [74], states that Subsection 7(4) requires that each comparison, between the claimed invention and the prior art, be made from the perspective of a person skilled in the art. That person’s task is to identify and assess the variations between the invention as claimed in each claim and the prior disclosure and determine whether or not these variations make a substantial contribution to the working of the invention as claimed in each claim. The court further stated at [74] that subsection 7(4) contemplates that, in performing this task, a person skilled in the art has certain background knowledge that person uses in identifying and assessing these variations. In that case then, in substance, if any variation contributed substantially to the way the roadside post functioned, then that variation necessarily made a substantial contribution to the working of the invention [80].
DISCUSSION
PRIORITY DATE
The opponent has challenged the entitlement of the claims of the innovation patent to the claimed priority date. It will be apparent that the relevance of the prior art cited in evidence is not affected by this issue. Nonetheless Mr Horak pointed out that a determination of the correct priority date is appropriate, at least insofar as having an accurate account in the Patent Register.
The prior art cited in evidence all pre-dates the earliest claimed priority date. Consequently there is no need to determine the priority date for this opposition. In respect to the Patent Register, I do not have the power to correct the register in this situation. I make no determination of the correct priority date.
INTERPRETATION OF TERMS AND CLAIMS
In the evidence from both parties and at the hearing, there was substantial discussion on the interpretation of several terms used in the innovation patent specification.
Dr Clarke, in his evidence in answer at [3.24] to [3.28], distinguished a subscriber from a user. He stated that becoming a subscriber involves the acceptance of conditions set by the organisation and generally involves payment of a periodic fee. The term “subscriber”, according to Dr Clarke, distinguishes regular users of a service who have ongoing commercial relationship with the service provider from casual users.
Dr Kermode, in his evidence in response, suggests that the term “subscriber” is a sub-group of the term “user”. Specifically, a subscriber is a user who provides sufficient identifying information to the organisation to establish a user account.
Users, including casual users, implicitly may need to accept conditions of computer systems they use. If not the terms of use then users may perhaps at least need to accept the operating conditions of such systems. On the other hand Dr Clarke’s interpretation that persons must agree to terms and conditions and pay a fee to become a subscriber is an interpretation not borne out by the innovation patent itself. For instance, the innovation patent specification appears to require of a subscriber only identifying data to enable validation of the identity of the subscriber (page 6 line 21 to page 7 line 5). Furthermore the discussion of the background art in the specification refers to “users” on several occasions in respect to the electronic delivery of essential mail items. See for example page 3 lines 20, 27, 30, 33 and page 4 line 2. Since that passage also refers to financial statements, invoices and bills as examples of essential mail items, one would presume the “users” identities would also be validated. I will treat the terms “subscriber” and “user” as substantially synonymous in the present case.
The term “essential mail items” is used throughout the specification. The opening sentence of the specification discusses the electronic delivery of financial statements, invoices and other essential mail items. Further in the same paragraph, a mail item may be considered “essential” if it is of particular interest, value or importance to the recipient, and includes solicited mail such as utility bills, telephone bills, bank statements, government documents and other items prepared by trusted service providers. On the other hand, on page 6 of the specification, the essentiality of information is a matter for each subscriber in view of the fact that subscribers are able to control their nominations of service providers from which they will receive essential mail items.

Dr Kermode, at paragraph 6 of his evidence in response, relied on the opening paragraph of the specification to state that utility bills, telephone bills and bank statements are specifically presented as essential mail items. That suggests that particular classes of items are to be regarded as essential mail items.
Dr Clarke relied more on the description on page 6 of the specification. In this respect, Dr Summerfield referred to paragraph 9.4(2) of Dr Clarke’s evidence in answer and paragraph 5.8 of his further evidence. Dr Clarke stated that the essentiality of a mail item is determined by the recipient and not the sender. He further stated that this influences the design of the claimed invention because it provides the recipient with control rather than the sender. Dr Summerfield added that if a subscriber does not want a bill, for example, then it is not an essential mail item.
Dr Summerfield further submitted that this narrower definition of essentiality of a mail item set the scope of the claimed invention. It has an impact on the remainder of the claimed features. For instance, the verification that the subscriber wishes to receive such a defined essential mail item results in a reduced monopoly across all the claims.
The limitation in the scope of “essential mail item” suggested by Dr Clarke appears artificial. It is difficult to reconcile a mail item being any less essential based on whether the subscriber nominates the service provider for the receipt of the mail item electronically. If that were so then the verifying features of the claimed invention would appear to be otiose. There would appear to be no need to verify that a subscriber wishes to receive an essential mail item from a nominated service provider if the item were itself by definition essential on account of being from a provider that was nominated by the subscriber. In any case the opening paragraph of the specification is telling. Financial statements and invoices are listed as examples of essential mail items. Also that paragraph mentions items of importance, not only of interest or value, to the recipient. In this context, mail items that cannot be ignored would also appear to be within the definition of “essential mail items”. I conclude this broader definition of “essentiality” should prevail in the present case. That is, essential mail items are defined by particular classes of items as set out in the opening paragraph of the innovation patent.
The patentee also distinguished “essential mail data” from “essential mail items”. Dr Clarke, at paragraph 9.5 of his evidence in answer, stated that essential mail data refers to content while essential mail items refer to that which is transmitted from the intermediary to the recipient. The item comprises firstly the data, secondly presentation or formatting and thirdly the container in which the formatted data is placed, such as an email attachment or a downloadable file.
Page 9 of the specification states the essential mail data may be a formatted copy of the essential mail item itself. Alternatively, the essential mail data may be data specifying content of the essential mail item, and requiring further formatting prior to delivery to the subscriber. In some embodiments essential mail data may be formatted into mail items such as financial statements, invoices, utility bills or the like, having a desired format or appearance. The essential mail items may be delivered to the subscriber in any convenient file format.
In a broad context, an essential mail item appears to be a user-presentable version of raw essential mail data.
The term “trusted communications channel” also requires some discussion. Page 8 of the specification indicates one embodiment of establishing a trusted communications channel is via the Internet in accordance with the File Transfer Protocol (“FTP”), or SSH FTP (“SFPT”), or any other suitable protocol. Mr Horak noted that FTP is an insecure protocol and that Dr Clarke also appeared to accept this in his evidence in answer (exhibit RAC8 page 4). SFTP on the other hand is more secure. Secure protocols are stated at page 8 to be preferred.
Mr Horak submitted the above indicated that secure protocols were not mandatory. He further referred to page 9 of the specification at line 15 where email is mentioned which is clearly not a secure communications channel. Dr Summerfield acknowledged that trusted communications channels were not necessarily all secure and that the innovation patent recognised this. He suggested that, in the patent specification, a trusted communications channel is where the recipient can be sure the sender is who they say they are.
The inference from both the opponent and the patentee appears to be that a trusted channel is not necessarily a secure one. Furthermore, the claims define a trusted communications channel being established only between the delivery server and the service provider. Taking the above points together, in the present case, it appears such a channel is simply one where the sender’s bona fides can be accepted. I will take this approach in interpreting the term, “trusted communications channel”.
The scope of claim 3 compared with claim 1 was the subject of some discussion at the hearing. Claim 3 appears to be repetitive, broadly stating that the step of verifying that the subscriber wishes to receive the essential mail item includes checking to confirm that the subscriber indeed wishes to receive essential mail items from the service provider. The difference in scope between the two claims is not readily apparent.
Dr Summerfield suggested firstly that the checking of subscriber nominations is just against the particular service provider that wants to send something. This does not appear to differentiate claim 3 from claim 1 as the latter defines, at lines 13 and 14, the delivery server receiving essential mail data from the service provider in the singular. A further suggestion that claim 3 defines the checking of whether the particular mail item is wanted also appears to cover the same ground as claim 1. At lines 15 and 16 of that claim, the verification of the subscriber wishing to receive an essential mail item, again in the singular, corresponding to essential mail data is defined.
I conclude claim 3 is substantially identical in scope to claim 1.
NOVELTY
In respect to novelty the opponent essentially relied on two prior publications and one case of prior use.
US Patent Application 2005/0165680 (Keeling et al)
The Keeling specification describes a system and method of registering a user with an electronic bill payment system offered by a messaging service provider. When a vendor is discovered with whom the user has an account, a message configured to solicit registration may be generated. The message includes a selectable object configured to trigger, upon selection by the user, registration of the user with the electronic bill payment system (paragraph [0004]). The discovery of the vendor with whom the user has an account may be via comparison of a customer list for the vendor to a bill payment subscriber list to identify one or more customers that are not registered with the electronic bill payment system (paragraph [0005]). Paragraph [0028] more particularly describes an intermediary host that may enrol a user in a message-based transaction system. The intermediary host may interface with a partner data store and compare that with an internal data store. As a result, a user common to both the partner data store and the internal data store may be identified. The user may then be prompted to enrol in the message-based transaction system or, if the user is already enrolled, receive a trusted transaction message to pay a bill for the partner using the message-based transaction system.
Dr Summerfield noted with reference to Dr Clarke’s further evidence, at [6.32], that the Keeling specification disclosed a system of prompts through the intermediary host to have users enrolled to receive trusted transaction messages to appease customers to pay a bill. That is, the Keeling system is a consent request driven system. Dr Summerfield further submitted that Dr Clarke’s evidence is clear that nomination is not equivalent to consent. He particularly noted that, in the Keeling specification, prompts for consent are made for the user rather than the subscriber nominating to receive essential mail items electronically.
Mr Horak submitted the only difference on this point is how the nomination is obtained. He noted the claims of the innovation patent are silent on that point.
It appears Dr Clarke has made distinctions that are not claimed. The independent claims are all silent on any preliminary action influencing the nomination. More specifically, there is nothing in the claims requiring the nomination to be an unsolicited one. The claims cover the ground of a subscriber nominating at least one service provider, irrespective of whether in response to a consent request from a service provider or intermediary, or of their own volition.
Paragraph [115] of the Keeling specification discloses the capability that a user may designate which vendors and financing sources the user has a relationship. I conclude the Keeling specification discloses nomination by a subscriber of at least one service provider as claimed in the innovation patent.
Dr Summerfield referred to Dr Clarke’s second declaration to iterate that the Keeling specification did not disclose the delivery of essential mail items. Rather, that system passes a transaction message, the content of which itself is not clear from the Keeling specification. On the other hand, Dr Kermode noted in his evidence in reply that the supposed distinction between a transaction message in the Keeling specification and an essential mail item in the innovation patent is not a real distinction. In Figure 1B of the Keeling specification, Dr Kermode noted an essential mail item is an example of a transaction message as the figure (stated at [0036] to illustrate an “electronic mail message”) illustrates an invoice. An invoice is itself precisely the type of item that the innovation patent discusses in its first paragraph in respect to essential mail items.
In respect to the claimed delivery server receiving and storing subscriber nominations, the Keeling specification’s intermediary host that enrols users and identifies users common to both the partner store and the internal data store, and that enables users to designate vendors, appears to cover those claimed features.
A transaction host is described at [64] and [66] as the generator of transaction information sent to the intermediary host. The transaction host may be configured to provide bills for a financial transaction, amongst other things. The transaction host is analogous to the service provider of the claimed invention.
Trusted transaction messages are mentioned throughout the Keeling specification. Additionally, bill payment systems require communication channels with appropriate trust features. Paragraph [76] of the Keeling specification also describes secure communications between the transaction host and the intermediary host. Paragraph [114] further describes validation of the sender identity by the intermediary host. I conclude a trusted communications channel is disclosed between a service provider and a delivery server as claimed in the innovation patent for receipt of essential mail data by the delivery server.
Paragraph [113] of the Keeling specification describes the operations of the intermediary host with reference to Figure 8. Initially the intermediary host receives the transaction. The operations then include validation of the sender identity/recipient relationship [115]. In one example, validating the sender identity/recipient relationship is performed by comparing a sender identity for a pending transaction with a list of organisations with which the recipient indicates a relationship exists. A user may designate which vendors and financing sources the user has a relationship. This appears to be equivalent to the claimed delivery server verifying that the subscriber wishes to receive an essential mail item corresponding with the essential data in electronic form by comparison with subscriber details and nominations stored in a database.
The delivery of the mail item in electronic form to the subscriber upon successful verification is adequately disclosed in the Keeling specification through the receipt of trusted transaction messages, for example invoices by the user to solicit payment of the invoice.
I regard all the features of independent claims 1, 4 and 5 are disclosed by the Keeling specification. I conclude independent claims 1, 4 and 5 are not novel over the Keeling specification. Since I have earlier determined that claim 3 is substantially identical in scope to claim 1, then I regard claim 3 as also not novel over the Keeling system.
In respect to claim 2, Dr Clarke, in his further evidence at [6.46], distinguished use of a subscriber identifier in the Keeling specification from allocation of one as claimed in claim 2. He particularly disagreed with Dr Kermode’s view in evidence in reply (at [203] and [204]) that users are identified within the Keeling system or other computer systems by assigning each user a unique identifier. Dr Clarke concluded that allocation processes may or may not be performed as part of the system in question.
The Keeling specification specifically discloses the issue of transaction messages to users. Moreover these messages, being part of Keeling’s electronic bill payment system, may be in the form of invoices as exemplified in Figure 1B for example. It would appear that the Keeling system must by necessity uniquely identify each subscriber to ensure delivery of invoices to the correct person. I regard the feature of allocation of a unique subscriber identifier as inherently disclosed in the Keeling specification.
Even if that were not so, claim 2 is silent on the origin of the allocation. I conclude claim 2 is not novel over the Keeling specification.
US Patent Application 2002/0065896 (Burakoff et al)
The Burakoff specification describes a method of obtaining consent from a user to electronically send sensitive information to the user. Paragraphs [23] and [24] define the term “sensitive information”. The term includes any information or data that government regulators or other organisations require or suggest be provided to certain individuals. Paragraph [23] also provides examples of US government regulators that may deal with sensitive information. Paragraph [24] lists other organisations such as lending institutions, medical offices, insurance companies and educational institutions, where examples of sensitive information may include investment information, credit card information, tax documents, contracts, mortgage documents, medical documents, etc.
Dr Summerfield submitted that the Burakoff specification’s definition of “sensitive information” was not equivalent to essential mail items as in the present specification. He again noted, with reference to Dr Clarke’s evidence and the innovation patent specification, that essentiality is determined by the subscriber.
On the other hand, the Burakoff specification’s discussion of government records, tax documents, investment information, medical documents, etc, relate to precisely the types of items that would be of particular interest, value or importance to the user as in the opening paragraph of the innovation patent specification. I regard the definition of sensitive information in the Burakoff specification as being within the ambit of essential mail items as defined earlier in the context of the present specification.
Dr Summerfield further indicated the Burakoff specification delivered a link, for example to a prospectus, and not a mail item. Paragraphs [33] and [80] discuss the use of hyperlinks in an email to the sensitive information. On the other hand, the use of email itself would seem to suggest a mail item is involved. In any case, the Burakoff specification also discloses other delivery techniques such as file attachments to an email [33]. Furthermore, in distinguishing “essential mail data” from “essential mail items”, I noted earlier that Dr Clarke describes a mail item as comprising the mail data, the presentation or formatting, and the container such as an email attachment. The latter is exactly disclosed at [33] of the Burakoff specification. Moreover, I have earlier concluded that an essential mail item is a user-presentable version of raw essential mail data.
I conclude a mail item and mail data are disclosed in the Burakoff specification.
The Burakoff specification discloses at [28] and [29] a system where the user is prompted at their computer for consent to the electronic delivery of sensitive information. Once the user responds to the prompt indicating their consent, software causes the user’s computer to communicate that consent electronically over a communications link or network to another computer. The other computer may be a server that receives and logs the consent. The server computer may be associated with the sender or originator of the sensitive information, or may store multiple sensitive information documents along with records of multiple users’ consents. The server computer would then be a clearinghouse for information and consent storage. The originator of the information, e.g a financial institution, may be different from the sender of the information, e.g. an information clearinghouse. Paragraphs [79] and [80] further describe the management of a user request for electronic delivery of sensitive information. Once the request is received by the clearing house, it is determined if the user has consented to electronic delivery of sensitive information. If the user has consented, the sensitive information is retrieved from its determined location and sent to the user electronically.
Dr Summerfield submitted in reference to Dr Clarke’s evidence that the Burakoff system is sender-driven such that a user is prompted for consent rather than nominating a service provider.
As discussed for the Keeling specification though, the claims of the innovation patent are silent on any preliminary action influencing the nomination. I regard the Burakoff specification as disclosing nomination of a service provider.
Furthermore the storage of nominations by a subscriber in an associated database is disclosed in the Burakoff specification through the consent logs stored in the server computer [29]. Paragraph [31] further indicates the server computer may implement a sensitive information and consent database with a relational database, that is, a database with a number of tables that are cross-referenced by one or more indices.
In respect to trusted communications channels, Dr Kermode noted the transfer of sensitive information in the Burakoff system inevitably had to be by way of a trusted communications channel ([103] and [104] of evidence in reply). Also, paragraph [40] of the Burakoff specification describes the FTTP or HTTP protocols for the transfer of information. Both of these would appear to be sufficiently trusted protocols for communications in the context defined earlier.
A point of difference between the Burakoff specification and the claimed invention is in the trigger for the verification. At [79] of the Burakoff specification, a user request for sensitive information triggers the verification to check that the user has previously consented or nominated to receive sensitive information from the service provider. That is, the verification is performed prior to the sending of any sensitive information by the service provider. On the other hand, in the claimed invention, the receipt of essential mail data by the delivery server appears to be the trigger for the verification.

It could be suggested that the above difference may be irrelevant in respect to claim 4 of the innovation patent. That claim defines a delivery server rather than a method as is the case with the other claims. It could then be argued that the trigger sequence or any other sequence of steps does not apply for claim 4 since that claim merely defines a device per se. On the other hand claim 4 clearly outlines that the delivery server includes a means for receiving essential mail data from the service provider, and means for verifying that the subscriber wishes to receive an essential mail item corresponding with the electronic mail data in electronic form. That is, the verification is in respect to essential mail data sent to the delivery server from the service provider. I conclude the above-mentioned point of difference applies to claim 4 as for claims 1-3 and 5.
I conclude the invention defined in claims 1-5 is novel over the Burakoff specification.
E-Boks system
Mr Horak relied on Mr Belli’s first and second declarations and exhibit GB-1 to establish the prior use of Post Danmark’s e-Boks system. Dr Summerfield accepted Mr Belli’s statements and that there appeared to be corroboration of the existence of the e:Boks system at the described periods of time. On the other hand, Dr Summerfield stated the issue was whether there was an enabling disclosure of the claimed invention to the alleged prior user.
The e-Boks system is an electronic mailing system developed by Post Danmark. Mr Belli has provided evidence of the public availability of the basic functionality of e-Boks since 2001, well before the priority date of the innovation patent. His exhibit GB-1 in his evidence in reply provides a diagrammatic overview of parts of Post Danmark’s electronic mail solution. That overview illustrates an e-Boks system which Mr Belli describes in his evidence in support (paragraph 2) as a secure Internet-based business-to-consumer electronic mailbox. He notes, at paragraph 13 of his evidence in reply, that the terms of the e-Boks service (translation of e-Boks Terms and Conditions in exhibit GB-3) state that the recipient has to make a positive acceptance, opt-in, to receive mail electronically by e-Boks from each sender. The opening paragraph of exhibit GB-3 states e-Boks gives one access to communications from the authorities and companies that one registers. One may also at any time cancel a registration for the receipt of communications from authorities and companies (page 3 of exhibit GB-3).
The diagram in exhibit GB-1 further illustrates an ‘eCom mailswitch’ or ‘Broker’ that is indicated as having a repository for subscriptions, and sender and recipient data. In GB-1, the eCom mailswitch is shown as part of an overall Post Danmark eCommunication solution between senders and the e-Boks system. As part of that solution, exhibit GB-1 also illustrates an ‘ePosthus’ front end. Mr Belli explains that, in Danish, “ePosthuset” means “e-post office”, whilst “e-Boks” means “e-mailbox” (paragraph 20 in evidence in reply). Mr Belli further states that Post Danmark’s eCommunication solution and the ePosthus front end were launched in August 2003, as an addition to e-Boks, to expand the service and distribution to senders and recipients (paragraph 22). Amongst other functionality, ePosthuset allowed Post Danmark’s customers the opportunity to choose their own individual post office solution, and to decide whether part of their mail is to be sent electronically or by conventional letter post. Users of ePosthuset could receive their mail electronically via a personal, electronic mailbox, e-Boks, or at a prescribed email address (paragraph 25).
The above description of e-Boks and the eCom mailswitch or Broker is equivalent to much of the claimed invention in respect to a delivery server having a database containing subscriber details and receiving subscriber nominations of at least one service provider from which the subscriber wishes to receive essential mail items in electronic form.
Dr Clarke indicated at paragraph 7.4(3) of his further evidence that the positive acceptance (opt-in) aspect in e-Boks was consent or sender-driven and not an unsolicited subscriber nomination approach as claimed in the present case.
On the other hand, while Mr Belli clearly describes a positive acceptance (opt-in) approach, this does not necessarily mean it is sender-driven by any sender. Mr Belli’s evidence appears to be silent on the latter point. I regard that as unsurprising as one would expect a postal service to be completely impartial regarding senders or service providers. As mentioned above, the e-Boks system gives one access to communications from the authorities and companies that one registers. One may also cancel a registration at any time. This appears to give the user the degree of control as in the innovation patent and would appear to be more a recipient-driven system than a sender-driven one. In any case, as noted earlier, the claims of the innovation patent are silent on any preliminary action influencing the nomination.
In respect to a trusted communications channel, Dr Kermode noted that Dr Clarke discussed the security of documents in the system and appeared to accept there was a trusted communications channel from senders to e-Boks but not necessarily from e-Boks to the user. As noted earlier though, a trusted communications channel may be less than a secure one. Furthermore, Dr Kermode noted that the claimed invention only defines a trusted communications channel from the service provider to the delivery server. Consequently Dr Clarke’s point is moot. In any case, Mr Belli describes e-Boks’ development for the delivery of administrative mail such as accounts, invoices and tax notices (paragraph 4, evidence in support). In this context Mr Belli also discusses e-Boks’ secure transmission mechanisms between senders and Post Danmark, such as File Transfer Protocol (“FTP”), FTP-Secure Sockets Layer (“FTP-SSL”), Secure FTP server, and Virtual Private Network (“VPN”), in all cases in combination with password logon and IP address registration. All these communications channel types have been in use since 2003 (paragraph 30, evidence in reply). Exhibit GB-5 further is a set of presentation slides of a November 2005 functionality whereby all Danish state employees would receive salary statements via e-Boks. I think the evidence is sufficient to hold that e-Boks clearly provided a trusted communications channel prior to and as claimed in the innovation patent.
In respect to the receipt of essential mail data by the delivery server, exhibit GB-1 illustrates sender data passing through an FTP server, formatter and document management system to the Broker, from where a mail item is sent to the e-Boks system. In respect to verification, Mr Belli’s evidence in support (paragraph 16) states that when a mail item is received by the e-Boks system from a mailer addressed to a particular subscriber, a logical unit in e-Boks checks the stored registration profile of that subscriber to ensure that mailer is selected for electronic delivery. The selected mode of electronic delivery is also ascertained with the electronic delivery then being realised.
While much of the above refers to the documented evidence in this opposition, the e-Boks system appears from the evidence to have been widely used in its various guises, at least in Denmark, since before November 2005. I expect that users of e-Boks, through for example the presentations made to Danish state employees, and more so those responsible for implementation and subsequent maintenance of e-Boks would have understood its functionality. I am satisfied that such persons, having viewed or worked with the e-Boks system in operation, would have understood or inferred that e-Boks operated in the way described above.
I conclude that independent claims 1, 4 and 5 are not novel over the e-Boks system. Since I have earlier determined that claim 3 is substantially identical in scope to claim 1, then I regard claim 3 as also not novel over the e-Boks system.
In respect to claim 2, Mr Belli’s evidence in support, at paragraph 9, states that a subscriber logs into the system with a user name and a PIN, or by way of a digital signature. The user name, or the digital signature, corresponds to a unique e-Boks user ID for that subscriber.
Dr Clarke stated at paragraph 7.4(8) of his further evidence that the e-Boks system uses identifiers allocated by other systems. Commonly, users are identified in e-Boks by a unique Danish centralised civil register number. The e-Boks system does not itself disclose allocation of an identifier.
Whether the user identifiers are allocated by e-Boks or by another system appears to be substantially immaterial in the present case. Claim 2 is silent on the origin of the allocation. There is at least a disclosure of subscribers that use the e-Boks system being allocated unique subscriber identifiers.
I conclude claim 2 is also not novel over the e-Boks system.
INNOVATIVE STEP
At the hearing, Mr Horak did not strongly press for lack of innovative step. He indicated the cited documents in evidence and the prior use all destroyed the novelty of the claims. Mr Horak submitted though that any differences that might be seen to exist do not contribute to the invention in the sense that they do not deviate from the concept that the user nominates the mailers from whom they wish to receive electronic mail. Mr Horak further mentioned that Dr Kermode commented in his first declaration that features such as a trusted communications channel could not provide an innovative step as they could not make a substantial contribution to the working of the invention because they do not in themselves play any part in the way the invention works.
Claims 1-5 were found above to be not novel over the Keeling specification and the e-Boks system. As there is no difference between this prior art and the claimed invention, I would also conclude that claims 1-5 do not have an innovative step over the Keeling specification and the e-Boks system.
The difference between the Burakoff specification and the claimed invention was found to be in the trigger for the verification. At [79] of the Burakoff specification, a user request for sensitive information triggers the verification to check that the user has previously consented or nominated to receive sensitive information from the service provider. That is, the verification is performed prior to the sending of any sensitive information by the service provider. On the other hand, in the claimed invention, the receipt of essential mail data by the delivery server appears to be the trigger for the verification.
The Dura-Post (supra) decision stated the test for innovative step to be one of the person skilled in the art identifying and assessing the variations between the claimed invention and the prior disclosure to determine whether or not those variations make a substantial contribution to the working of the invention as claimed in each claim.
Both parties presented some views on who the appropriate person skilled in the present art was. Dr Kermode (in evidence in reply at [30] - [31]) suggested the person skilled in the art needed to have business and technical skills but particularly in software development of the Internet and business applications of network computer systems and processes. Dr Clarke similarly suggested (for example in further evidence at [2.8]) the art in question required a blend of technical skills, for example in information systems, and business skills. Dr Clarke appeared though to lean a little more toward the business side in describing the appropriate person skilled in the art. In this respect, Dr Clarke indicated that requirements analysis was a body of expertise particularly pertinent to developing services that were expressly customer-oriented as in the present case.
I think very little turns on whether Dr Kermode’s or Dr Clarke’s approach is adopted. Given the alleged invention broadly relates to users having the capability to select service providers from whom they receive essential mail items electronically, I am inclined though to slightly favour the approach of Dr Clarke.
In any case there is little evidence from either party on any assessment by any person skilled in the art of the innovativeness of the alleged invention in the light of the common general knowledge such a person would have possessed before the priority date.
On the face of it, the different triggers for verification between the claimed invention and the Burakoff specification are characterised by markedly different operating modes. In the Burakoff specification, verification occurs first and then the essential mail item is sent by the service provider. In the claimed invention, the essential mail data is sent to the delivery server by the service provider and then verification occurs. The modes of operation between the claimed invention and the Burakoff specification appear to be quite different. I regard the invention of each of claims 1-5 of the innovation patent as making a substantial contribution to the working of the claimed invention over the Burakoff specification.
I conclude claims 1-5 have an innovative step over the Burakoff specification.
CONCLUSION
I have found that claims 1-5 lack novelty over the Keeling specification and over the e-Boks system. Similarly I have found that claims 1-5 lack an innovative step over the same prior art.
There may be patentable subject matter in the innovation patent specification. I allow the patentee sixty (60) days from the date of this decision to propose suitable amendments to overcome the above findings, otherwise the innovation patent will be revoked.
I also note the parent PCT application PCT/ AU2007/000054 is equivalent to AU 2007204609. Claims 1, 4, 10, 21 and 22 of that application appear to be the same, at present, as claims 1-5 respectively of the present innovation patent. Under Section 64(2) of the Patents Act, a standard patent cannot be granted on the PCT application unless the innovation patent is surrendered.
COSTS
Both parties agreed with the general principle that costs should follow the event. However Dr Summerfield also made a submission for actual costs for the patentee irrespective of the outcome. Actual costs were sought because of the opponent’s alleged conduct during the evidentiary stages. The submission was on the basis that further evidence was required from both parties because the opponent relied initially upon evidence, in its evidence-in-support, from an attorney as opposed to an expert in the field in relation to such matters as the background knowledge of persons skilled in the field. Only after the patentee presented his evidence-in-answer from an expert in the field did the opponent engage its own expert. Dr Summerfield indicated that this necessitated the further evidence from both parties.
At the hearing, details from Dr Summerfield to justify the actual costs incurred were sketchy. The claim was for some $30,000. Mr Horak made some preliminary counter submissions. He stated that the opponent would vigorously defend such a claim if pressed, that the opponent could counter with equal argument about the substantial costs the opponent has incurred in respect to the nature of the evidence from the patentee, and that, ultimately, further significant additional cost would be incurred by both parties if that matter is pressed.

100. The Green Edge (Ipco) Pty Ltd v Melbourne Water Corporation decision, [2009] APO 26, is a recent decision involving a variation on costs. The delegate made a slight variation on costs as a result of one party causing the original hearing date to be adjourned. A request by the other party to also vary costs on the nature of evidence that was filed was not entertained in that case. It is noteworthy that, in the Green Edge (supra) case, there was no award of costs beyond those specified in Schedule 8 of the Patent Regulations. The delegate also referred at [91] to the provisions of Regulation 22.8 that stipulate that costs, other than those specified in Schedule 8, must not be awarded unless each party has had the reasonable opportunity to make submissions on the matter.
101. In the present case, the patentee’s request for an award of actual costs arose for the first time in submissions the day before the hearing. On this point alone, I think it could not be fairly said from the hearing that the opponent has had a reasonable opportunity to make representations on the matter of the actual costs sought.
102. Furthermore the patentee has presented very little evidence that there has been an extraordinary amount of work and labour in the preparation and conduct of the case and that such amount of work was necessary and reasonable to do. See Collins v Westralian Sands Ltd (1993) 9 WAR 56 at 67 and Nicholson v Colonial Mutual Insurance Co (1887) 13 VLR 58 at 65, both cited in American National Can Company v W.R. Grace & Co.-Conn. And Trigon Packaging Systems (NZ) Ltd [1996] APO 32. The patentee’s application to serve further evidence is largely the extent of the available evidence on this point. In the present case, it may be that the evidence of the opponent’s attorney, Mr Bird, should have less weight than that of the opponent’s expert, Dr Kermode, for example. On the other hand, Mr Bird appears qualified to a reasonable degree in this field. I think it could not be fairly said that Mr Bird’s evidence is irrelevant on the background knowledge of persons skilled in the field.
103. While the evidence of Dr Kermode clearly expands from Mr Bird’s evidence, there is little before me from the patentee to indicate that the introduction of Dr Kermode as the opponent’s expert, at the evidence-in-reply stage, was so detrimental to the patentee as to create an extraordinary amount of extra work and that such work was necessary and reasonable to undertake. Furthermore, since the opponent has been successful in this opposition, it would appear the opponent’s conduct would need to be regarded as extraordinarily bad to justify an award for the actual costs sought going against the opponent.
104. I entertain the patentee’s submission for actual costs no further at this stage.
105. I will determine costs only in accordance with Schedule 8.
106. The opponent has been successful in this opposition. I award costs in accordance with Schedule 8 against the patentee, David John Holton.
M. G. Kraefft
Delegate of the Commissioner of Patents