Ceebron Pty Ltd v Exago Pty Ltd
[2005] APO 10
•11 March 2005
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 757438 in the name of Ceebron Pty Ltd
Title: A Method of Recording the Temperature of Perishable Products in Cold Chain Distribution
Action: Opposition by Exago Pty Ltd under s 59 of the Patents Act 1990
Decision: Issued 11 March 2005 .
Abstract
The invention relates to a method and apparatus for monitoring a consignment of goods as it moves along a distribution or supply chain.
The description of the invention, and the clarity of the claims, was found to be adequate. The claimed invention was also found to be novel, have an inventive step and was for a manner of manufacture on the available evidence.
The opposition failed on all counts.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 757438 by Ceebron Pty Ltd and opposition under Section 59 of the Patents Act 1990 by Exago Pty Ltd.
BACKGROUND
Patent application 757438 in the name of Ceebron Pty Ltd (hereinafter referred to as Ceebron) was filed on 1 November 1999 by Donald George Richardson. The patent derives priority from provisional application PP6863, which was filed on 30 October 1998. The patent application was advertised accepted on 20 February 2003, and assigned to Ceebron on 20 August 2004.
Exago Pty Ltd (hereinafter referred to as Exago) filed notice of opposition on 19 May 2003, followed by a Statement of Grounds and Particulars on 19 August 2003. Exago’s evidence in support was filed on 19 November 2003, and after several unopposed extensions of time, evidence in answer was filed by Ceebron on 16 July 2004. The opponent advised in a letter dated 12 August 2004 that they did not intend to file any evidence in reply.
The statement of grounds and particulars lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990: paragraph 18(1)(a) (non-patentable invention), paragraph 18(1)(b) (novelty and inventive step) and section 40.
The matter was set down for a hearing on 14 December 2004. The applicant was represented by Mr Peter Heathcote, patent attorney of the firm Shelston IP, and assisted by Mr Matthew Ward, also of that firm. The opponent was represented by Mr Daryl Mischlewski, patent attorney of the firm IP Strategies.
THE SPECIFICATION
The invention relates to a method and apparatus for monitoring a consignment of goods as it moves along a distribution or supply chain. As background art, the specification refers to the use of reusable data loggers that are placed in perishable product consignments by the food and pharmaceutical industries. These data loggers are expensive and need to be returned to the shipper on consignment completion. Additionally, the data is not accessible until the data logger is read and this may be after a product recall or hold should have been triggered.
According to the specification on page 3, lines 13 to 16, the invention “will provide the advantages of being able to economically continuously monitor and record desired parameters (for example, temperature, time and location) of a consignment from a production point to the retailer warehouse or outlet”. There are 26 claims, of which claims 1 and 12 are independent claims. Claims 1 and 12 read as follows:
A method of monitoring a consignment of goods including the following steps:
measuring a predetermined parameter or parameters of said consignment using a disposable sender device attachable to said consignment;
transmitting a signal containing data representative of said measured parameter to a central location;
maintaining a database relating to said consignment at said central location, said database including said data representative of said measured parameters;
initiating said database to include consignment data for each consignment; and
providing secure communication access to said database to enable monitoring by enabled users of data available from said database.
12) A system for monitoring a consignment of goods including:
a sender device attachable to said consignment including a measurement means for measuring a predetermined parameter or parameters of said consignment;
first communication means for transmitting a signal containing data representative of said measured parameter to a central location;
computer system means for maintaining a database relating to said consignment at said central location, said database including said data representative of said measured parameters and wherein said database is initiated to include consignment data for each consignment, and
a secure communication access means for providing access to said database to enable monitoring by enabled users of data available from said database.
EVIDENCE
The evidence in support from Exago consists of three statutory declarations by:
Per Erik Stark, Managing Director of ETM Pacific Pty Ltd. Mr Stark states that “ETM sells environment monitoring equipment and services for buildings, cold stores and transport”. Since 1996 ETM has been distributing data logging equipment and software on behalf of Grant Instruments (Cambridge) Ltd and its associated company Eltek Limited. 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 ES1 to ES11.
David Williams, Engineering Manager of DataTaker Pty Ltd, which develops data logging and data acquisition systems. He previously worked for DataTaker from 1987 to 1996 (then known as Data Electronics (Aust) Pty Ltd) as a software engineer. Grant Instruments (Cambridge) Ltd has been a major shareholder in DataTaker since 2001. Mr Williams states that “Most of my career in software development has been in relation to writing software for data collection devices, communication protocols for data transfer via landlines, radio frequency transmission and mobile telephone (GSM), and software for the merging of collected data with other data bases (sic) and the display of that data”.
Graham Paul Henstridge, a Director of Capgo Pty Ltd, which develops data acquisition and industrial data logging products. Mr Henstridge was the Managing Director of DataTaker from 1999 to 2002, and co-founded Data Electronics (Aust) Pty Ltd in 1982. Exhibited to the declaration are documents GH1 and GH2.
The applicant's evidence in answer consists of a single statutory declaration by the inventor, Donald George Richardson.
More details of what is contained in the evidence, where relevant, will be given later in the decision.
SUBMISSIONS
The submissions made were quite extensive and I will refer to them where necessary in my decision. However it became clear during the hearing that, so far as the grounds of novelty and inventive step were concerned, the opponent sought to rely on only five of the cited particulars, namely exhibits ES1 to ES5. The most relevant submissions went to the content of these disclosures and the construction of the claims.
Following a brief perusal of the remaining evidence, exhibits ES6 to ES11, GH1 and GH2, I am satisfied that the invention of claims 1 to 26 is not disclosed by these documents.
DECISION
10. 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, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application (1979) RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). 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).
11. A considerable amount of the evidence and the submissions in this matter concerned the interpretation of claims 1 and 12. I will need to resolve these issues due to their potential impact on novelty and inventive step.
Section 40
12. One particular submission made by Mr Mischlewski concerned the exact scope of the terms “consignment”, “disposable”, “transmitting” and “maintaining”. Resolution of this ground of attack by the opponent under section 40 raises questions of construction. In Flexible Steel Lacing Company v Beltreco Ltd 49 IPR 331 at 347-350 Hely J provided an extensive and useful review of the general principles governing the interpretation of patent specifications. It is not necessary to set out that passage in full, except to note his Honour's observation that the specification must be read as a whole while recognising that as a whole it is made up of several parts that have different functions.
13. Hely J also observed (at 349) that the hypothetical addressee of the specification is the non-inventive person skilled in the relevant art before the priority date. Bowen CJ, Deane and Ellicott JJ said in Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (at 476-477) that the complete specification must not be read in the abstract but should be construed by adopting a common sense approach to what the words used convey in the context of the then-existing published knowledge. The facts in Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183 are illustrative of this situation, and the remarks of Lord Diplock (at 242-243) as to a "purposive" rather than a "purely literal" construction may be understood in that light.
14. In the present case no expert evidence has been tendered regarding what meaning the hypothetical addressee would ascribe to the words used in the specification. However, in my opinion nothing turns on this as it is not suggested by either party that the words have been used in some special sense, and thus their ordinary meaning must prevail (Flexible Steel at 350).
15. Accordingly, I find that the term “consignment”, which the Concise Oxford English Dictionary defines as “a batch of goods consigned” can equally apply to a container of goods as well as to a pallet of goods; that “disposable” merely signifies “able to be dispensed with; easily dismissed” and does not restrict the “sender device” to a particular monetary value in relation to the goods that are monitored, and that “transmitting” does not restrict the mechanism by which data is sent to a central location to wireless transmission. Furthermore, I note that Mr Heathcote did not argue against the opponent’s interpretation of these terms, and agreed that “….those terms should be interpreted in their normal manner in terms of reading the specification as a whole....by the skilled addressee”.
16. With regard to the term “maintaining”, Mr Heathcote initially submitted that “my understanding of that term in the context….is that maintaining is on a constant basis” – the suggestion being that the database is updated in real-time with data from the “sender device”. Mr Mischlewski asserted that “….maintaining could be performed at the end of a consignment’s journey, by downloading the data from a sending device.”, and noted that the measurement of parameters either continuously or at predetermined intervals is preferred but not essential, according to the specification at page 4, line 11. Furthermore, it is difficult to understand how a database can be updated in real-time if the data on which it depends is not collected in real-time.
17. When the specification is read as a whole, I find the opponent’s view more compelling. Appendant claims affect the construction of the claims to which they are appended. In order to give proper effect to a statement of claim, the presumption is that each claim is of differing scope to each other claim, and where possible, claims should be construed accordingly - see Parkinson v Simon, (1894) 11 RPC 493. It is significant to note that claim 2 includes the phrase “wherein said parameter or parameters are measured continuously or at predetermined intervals”, thus indicating that the construction claimed in claim 1 does not necessarily possess such a feature. Consequently, and if I am to presume against redundancy, it follows that the term “maintaining” as used in claim 1 includes within its scope the downloading of data to the database at the end of a consignment’s journey. Similar reasoning applies to claim 12 in light of claim 13. Accordingly, I consider that the term “maintaining” as used in claims 1 and 12 is not restricted to or does not imply a database that is updated in real-time.
18. In conclusion, I find that the claims are clear and succinct. As an aside, if I am to accept the evidence of Messrs Stark, Williams and Henstridge as being truly reflective of the skilled addressee, it would be rather difficult to say the description and claims are unclear when, as persons skilled in the art, they clearly have had little difficulty in ascribing meaning to it.
Fully describe the invention
19. The opponent expressed concerns that the specification fails to fully describe the invention, due to a perceived lack of detail. Mr Mischlewski argued that “….the sender device is not described in details of the components and is not identified by brand name”, and referred me to the decision of American Cyanamid Co. v Ethicon Ltd [1979] RPC 215. Mr Stark at paragraph 14 of his declaration makes the specific criticism that:
“There is no detailed description of a sender device which includes means for measuring a parameter such as temperature. The Grant and Temp Assure systems had sender devices capable of transmitting temperature information but the opposed specification does not mention them. It appears that the patent draftsman had a particular device in mind when describing the sender device because at pages (sic) 9 it is mentioned that it has a tag to activate a battery and contains sender specific data on the casing. I am not aware of a device that fits this description.”
Analogous comments are made by Williams at paragraphs 6 and 7 of his declaration, and also by Henstridge at paragraph 9 of his declaration.
20. I agree with Mr Mischlewski’s general comments on the law; the requirement of the inventor to describe his "best method of performance" is to protect the public against a patentee "who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of the best method of performing his invention" (American Cyanamid at 269).
21. In response, Mr Heathcote submitted that there is no requirement to identify particular integers by manufacturer or model number, and that both Williams and Henstridge admit in their evidence that suitable data loggers were known. Williams states at paragraph 5 of his declaration that:
“Prior to October 1998 any one working in the field of data collection would have known that it was possible to have a system that used a data logger such as a temperature data logger with radio frequency transmission capabilities to transmit temperature data at regular intervals to a central database where the temperature could be merged with other relevant data such as consignment information and made available for viewing or retrieval by access over a network such as the internet.”
22. My attention was also drawn to paragraph 6 of the Williams declaration which states in part that:
“’Disposable’ is a relative term and a $500 data logger may be disposable after use with a consignment worth $500,000. However for cold chain foodstuffs the consignment values are usually less than $10,000 and I am not aware of any data logger any where today or in the past, that is under $100 in price and can collect temperature data and transmit this by radio or any other transmission means into a remote database for merging with other consignment data. I do not believe that a data logger above $50 in price would be considered to be disposable by most operators of cold chain transport businesses.”
23. In my view, these statements suggest that Exago’s argument against the best method of performance is predominantly based on economic or commercial grounds, rather than any true deficiency in the specification. Furthermore, it would seem the evidence provided by Mr Williams in this regard is inconsistent with the opponent’s assertion that the invention has not been fully described.
24. The law on sufficiency was considered by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8, affirming that:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"
25. While it is clear that a skilled addressee should not be expected to employ any inventive ingenuity, it is not necessary for a complete specification in describing the best method of performing the invention to provide details that the addressee of the specification (the person skilled in the art) can supply from their own background knowledge. As was stated in No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243:
“[I]n other words, [it is essential] that the patentee should disclose his invention sufficiently to enable those who are skilled in the relevant art to utilise the invention after the patentee's monopoly has come to an end. Such disclosure is, indeed, the consideration that the patentee gives for the grant to him of a monopoly during the period that the patent would run.
It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it."
26. The invention involves a combination of features which I believe are adequately defined by the specification. The provision of specific hardware and/or software in the monitoring system to carry out the basic data logging that the present invention requires would seem to me to be well within the capabilities of the skilled workman in the field, and the specification would thus not appear to lack sufficiency in this respect. The observation by Williams and Henstridge that suitable data loggers were known to them appears to confirm that the teaching in the specification is sufficient for the result to be obtainable by the exercise of the common general knowledge of those to whom the specification is addressed. I also note that the present specification appears, in my experience, to be no less detailed than is normal for patent specifications concerned with similar subject matter.
27. Furthermore, none of the declarants has asserted that as a result of any deficiency in the application, they would be unable to perform the invention. Rather, the argument is that none of the declarants would be able to perform the invention cost-effectively, a line of reasoning which in my opinion is more suited to a ground of lack of utility. In any case, I consider that the system and method defined by the claims is potentially capable of achieving the object of the invention.
28. For the above reasons I must reject the contention that the specification fails to fully describe the invention. I also note that if such an allegation were found true, it would be inimical to the opponent's case on obviousness.
Novelty
29. It was accepted by the parties that, in general terms, the test to be applied in respect of lack of novelty is the reverse infringement test, that is, "whether the alleged anticipation would, if the patent were valid, constitute an infringement" (see Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 per Aickin J at 235 cited by Lockhart J in R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568). The reverse infringement test requires that the prior publication contain "clear and unmistakable directions to do what the patentee claims to have invented" (see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 per Sachs LJ at 486). 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).
30. I do not think there is any doubt that every feature of independent claims 1 and 12 should be considered essential. A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components (supra)), and this seems to me to be the case here. Neither party expressed a contrary view.
I will discuss each of the exhibits relied upon in order of relevance.
Copy of the Grant Instruments brochure entitled “500 Series Squirrels – the reliable link in the cold chain”, undated (referred to as ES4)
31. Though this document is undated, Exago assert that it was printed and distributed publicly before 30 October 1998. The applicant did not challenge this, and given the evidence before me I am prepared to accept that it was published before the earliest priority date. This brochure describes the 500 Series Squirrel system of hardware and software, elements of which may be put together to form a cold chain monitoring system. The 500 series of data loggers consists of three models; the TL501 which is cab-mounted, the TL502 which is trailer mounted, and the CS503 which is designed for use in cold stores.
32. A standard 500 Series Squirrel can measure and record temperatures from up to eight thermistor temperature sensors, and can also accept four contact-closure “state” inputs, such as doors opening and closing and refrigeration systems switching on and off. The logging interval can be set between one second and four hours, and these readings are stored along with the time and date at which they were recorded in memory. Data which a 500 Series Squirrel has logged can be output directly to a printer or downloaded to a PC by using a database management and information analysis program called “TEMPWISE”. This database management program provides several search options, including the ability to locate information relating to specific dates and times or to track down data from a particular vehicle or cold store.
33. I am satisfied that this document discloses all of the individual integers of claims 1 and 12 with the exception of “transmitting…..to a central location” and of “secure communication access”. Though there is no express disclosure of “secure communication access” in the citation, the opponent submitted that “…it is not clear what this is….” and that it could merely comprise a password protection scheme which would be known to the person skilled in the art as part of their common general knowledge.
34. As the feature of providing secure communication access is an essential feature of the claimed invention, this Grant Instruments brochure would seemingly fail the "reverse infringement test". However, the opponent contends that this feature is common general knowledge, and that the person skilled in the art would read the brochure as disclosing this feature.
35. In my opinion, this argument can be readily dismissed. Even if I was to accept that the feature of providing secure communication access is common general knowledge, I consider there would not be any basis upon which to find that claim 1 lacked novelty. The authorities have clearly stated that to render a claim not novel the prior art must positively disclose each essential claimed feature, usually citing the well known quote from General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra) that:
"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."
36. This requirement that each essential feature be disclosed holds, in so far as novelty is concerned, even where the additional matter defined by the claim is common general knowledge or a workshop variation, provided it is an essential feature of the claim in question - Nicaro Holdings Pty Ltd v Martin Engineering Co, (1990) 91 ALR 513 and RD Werner & Co Inc v Bailey Aluminium Products (supra). The opponent has tried to get around this by a process of adding common general knowledge to the disclosure of the Grant Instruments brochure (although it has attempted to characterise it more as a process of reading the prior art in light of the common general knowledge). This cannot give rise to anticipation, although, as is said in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra), it may cause the claim to fail on the ground of obviousness. The same point is made in Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689, except that the term "subject matter" is used rather than "obviousness".
Accordingly, I find that claims 1 to 26 are not anticipated by this citation.
Copy of the Grant Instruments brochure entitled “500 Series Squirrels – Technical specifications for cold chain monitors”, February 1994 (referred to as ES2)
37. The brochure provides detailed specifications of the TL501, TL502 and CS503 data loggers as well as the TEMPWISE database management software. Attributes such as the number of input channels, temperature recording range, system accuracy and physical size of the data loggers are listed. Various accessories, such as an automatic telephone dialler and remote alarm selection units, are also described. The brochure states that the TEMPWISE database, analysis and graphics software provides password-based security to protect recorded data, if required.
I believe that this document discloses all of the individual integers of claims 1 and 12 with the exception of “transmitting…..to a central location”. As the document lacks an essential feature, I must find that claims 1 to 26 are not anticipated by this citation.
Copy of the Grant Instruments brochure entitled “500 Series Squirrels”, July 1993 (referred to as ES1)
38. This one page brochure states that the 500 Series Squirrel data logging system is “A complete solution to temperature monitoring throughout the cold chain” which “…can meter and record parameters such as temperature, humidity, voltage, current, pressure and flow – and many more”. The brochure also describes TEMPWISE as a “graphical analysis program”, which presumably can be used to plot data recorded from several data probes or sensors for further analysis. Password security is built into the system to “….ensure the data integrity which is necessary in demonstrating due diligence”.
39. No other relevant information is provided. There is no disclosure of “transmitting to…..a central location”, nor is it suggested that “TEMPWISE” includes any database functionality. In particular, I note that the term “database” is not used at all in this document.
I conclude that claims 1 to 26 are not anticipated by this citation.
Copy of the Grant Instruments web page entitled “Temperature Monitoring in the Cold Chain”, 23 May 1996 (referred to as ES3)
40. This document lists the main features and technical specifications of the 500 Series Squirrel data loggers. I note that this information is a subset of that disclosed in exhibit ES2. Accordingly, I conclude that claims 1 to 26 are not anticipated by this citation.
Copy of the Grant Instruments price list entitled “Squirrel 500 Transport and Cold Store Loggers”, December 1997 (referred to as ES5)
41. This document details the part numbers and prices of various components of the 500 Series Squirrel system. Whilst providing an indication of the type of hardware and software that was available before the earliest priority date of the application, it does not disclose how these components could be used or implemented. I find that claims 1 to 26 are not anticipated by this citation.
42. In summary, I have found that none of the citations, when considered independently, identifies each and every feature of the claimed invention. However, in order to sustain their submission regarding lack of novelty, the opponent suggested that documents ES1 to ES5, when considered together, disclose the claimed invention.
Can the documents be considered together?
43. Section 7(1)(b) of the Patents Act provides that prior art information made publicly available in two or more related documents can be used if the relationship between the documents is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information.
44. Some guidance of when two or more documents constitute a single source of information is obtained from Nicaro Holdings Pty Ltd v Martin Engineering Co, (supra) at page 526 where Gummow J stated:
"What degree of lack of connection between two or more documents will make them 'independent' and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe & Dohme case*. Plainly, the degree of connection which is stated to exist in the documents themselves will be important.”
* (1927) 44 RPC 367, (1928) 45 RPC 153.
45. Importantly for the present case, his Honour also pointed out (at 522) that where a combination patent is involved, it is the combination which must be shown to be disclosed, as distinct from the separate integers.
46. In my opinion, the contention that the documents should be treated as a single source of information fails for two reasons. First, there are no references provided in any of the documents ES1 to ES5 identifying the other documents, let alone an explicit requirement that they be read in conjunction with each other. While it is true that documents ES1 to ES5 describe certain aspects of the same system, they are not so closely related that the documents themselves form what Astbury J called “one consistent whole”. Consequently, it is difficult to see how the documents could be brought sufficiently closely together for the purpose under consideration here. I also note that the opponent has failed to adduce any evidence that clearly shows that a person skilled in the relevant art in the patent area would treat ES1 to ES5 as a single source of information. Even though Mr Mischlewski asserted that:
“All of them [were] read together, and that’s the way Henstridge, Stark and Williams read them; they say that at any time, you could have put together...any of the combinations.”
I find no clear support for this contention in the opponent’s evidence.
47. There is no statement in the declarations of Stark, Williams or Henstridge that suggest that either they, or another person skilled in the art, did or would consider these documents together. For the above reasons, I do not think it is appropriate in this case to treat ES1 to ES5 as a single source of information.
48. Second, and perhaps most critically, no pattern or mosaic of ES1 to ES5 discloses the claimed combination “in clear, unequivocal and unmistakeable terms” (Nicaro Holdings Pty Ltd v Martin Engineering Co, (supra)). To use the metaphorical language of General Tire, I do not think they provide a signpost along the road to the invention alleged in the patent in suit. Even though I have indicated that all the features of claims 1 and 12 are mentioned in these documents, I am not convinced that in following the combined disclosure the claimed combination would invariably result.
Prior Use
49. The opponent also submitted that the invention of claims 1 and 12 “…would be infringed by the Grant data logger system when put to its intended use”. If I understand correctly, the opponent is alleging that the availability for sale of the Grant 500 Series hardware and software anticipates the present claims.
50. Adequate proof is essential where prior use is relied on. In order to be invalidating under the Patents Act, prior use must be "informative" in the sense that the necessary information (disclosing all of the essential features) is made available to the public. See Hope v Heggies Bulkhaul Ltd (1996) 34 IPR 584.
51. The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application (1970) RPC 103. At page 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
52. The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application (1979) RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135, in which Waddell J. states:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation."
53. To prove a lack of novelty s 7 requires the opponent to show that a claimed invention is not novel in light of "prior art information ... made publicly available". Consequently in this context it is insufficient to prove merely that a system for monitoring a consignment was available on the market, and that the system comprised certain components which could be combined in a variety of ways. The opponent must also show that the information disclosed to the public by that sale was such that it deprived the claimed invention of novelty.
54. In my view the opponent's evidence falls far short of that necessary for me to be satisfied that this ground has been made out. No details are provided by the declarants regarding what items manufactured by Grant were sold and used to design any consignment monitoring system. Without specific details of location, date and other circumstances of the alleged disclosure, a positive finding of fact is impossible. As was pointed out by Mr Heathcote, if many such systems were sold and deployed, surely it would not have been problematic to obtain such evidence.
55. Consequently, I find that there is insufficient evidence to support a conclusion that there was, before the priority date, use of the system for monitoring a consignment or, even if this was assumed, that the use was sufficient to make information about it publicly available, as required by section 7.
Therefore, I find that the opponent’s argument of prior use must fail.
Inventive Step
56. The effect of subsections 7(2) and 7(3) of the Patents Act, at least in the case of applications filed before 1 April 2002, is that 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.
57. Considering the latter of these criteria first, I do not think there is any doubt that the various documents which Exago has established as being in the public domain before the priority date of the claims would be "understood" and "regarded as relevant" by the person skilled in the art. However I think considerable uncertainty surrounds whether the non-patent literature documents ES1 to ES5 upon which an allegation of lack of inventive step might be sustained would have been ascertained.
58. In Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited v Rohm and Haas Company, (1997) APO 40 (4 September 1997), the hearing officer took the approach that 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. That approach seems to me to be sound.
59. Applying it to exhibits ES1, ES2, ES4 and ES5, the relevant publicly available documentary information is in the form of brochures, and the evidence from Mr Stark at paragraph 6 of his declaration is that “…exhibits ES1 to ES5 were distributed to interested companies in Australia by ETM prior to 30 October 1998”. Nothing, however, is known of the breadth of distribution or of the subsequent fate of those documents. Given the uncertainties surrounding the distribution of the brochures, it is not possible, in my view, to conclude that the person skilled in the art could reasonably be expected to have found any of them.
60. Exhibit ES3 is a copy of an Internet page, presumably from the Grant ( website. I note that no indication of the URL (ie web address) appears on the document, as may usually be found on a document printed from the web. No evidence has been presented which establishes how widely this document has been distributed. With regard to the webpage itself (as opposed to the printed copy of the webpage), no evidence has been provided to confirm when, and for what period, this page was publicly available on the Internet. In this regard, my specific concern relates to the transitory nature of material on the Internet.
61. Therefore, in my view, the evidence does not satisfactorily establish that the relevant publication of those brochures which the evidence has established to have occurred could reasonably be expected to have enabled those documents to have been ascertained by a person skilled in the art. If the allegation of inventive step is to be sustained, it therefore must be sustained on the basis of the common general knowledge alone.
62. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 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."
63. 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 that something is common general knowledge.
64. Mr Heathcote queried whether Mr Stark and Mr Williams qualified as persons skilled in the relevant art and were thus in a position to comment on what was common general knowledge in the art at the relevant time. In part he suggested they were not involved in the particular field of the invention, which he considered to be the design of consignment monitoring systems. Though the bulk of Mr Stark’s expertise is in the field of refrigeration systems, I believe his role as Managing Director of ETM, a distributor of data logging systems, would provide him with some familiarity with consignment monitoring systems. The employment history of Mr Williams indicates that he has filled various roles as a software engineer. Mr Heathcote suggested Williams had no technical qualifications relevant in the art and given his role as a software engineer was not a man with practical experience in the technology. I note that Williams provides little detailed evidence of his level of knowledge in the art and precise activities in relation to the design of consignment monitoring systems. It certainly seems that he wrote software which required a detailed knowledge of the data logging aspects of such systems. What is not clear is his level of knowledge acquired and whether his activities placed him as a person skilled in the art before the priority date. I am however prepared to accept that he may be skilled in the art and view his evidence as representing that of such a skilled person.
65. The evidence put forward by the opponent to establish the common general knowledge in the art is contained in the statutory declarations by Stark, Williams and Henstridge. A difficulty I find with the evidence is that the declarants do not explicitly state what matters that they considered were common general knowledge in the art. Mr Stark's evidence on common general knowledge is essentially limited to the statement that:
"Prior to October 1998 I and others working in systems development for cold chain monitoring knew that a system based on a temperature data logger with radio frequency transmitter and a consignment tracking database with secure access by all participants in the cold chain could be created from commercially available components…."
66. By this I take it he is saying that the individual steps and features are well known. However, nowhere does he state that it would be obvious to combine these steps and features into a single method or apparatus.
67. Similar comments were made by Mr Williams at paragraph 5 of his declaration. Mr Henstridge, in his evidence, makes a couple of similar assertions, for example:
"Prior to October 1998 any one working in the field of data collection would have known that it was possible to have a system that used a data logger such as a temperature data logger with radio frequency transmission capabilities to transmit temperature data at regular intervals to a central database where the temperature data could be merged with other relevant data such as consignment information and made available for viewing or retrieval by access over a network such as the internet.”
He also states:
"What is described is a generic system that has been at least partially assembled by companies working with data loggers prior to October 1998.
68. Again, these comments provide further confirmation that the individual steps and features of the claimed invention were well known. Based on this evidence, I am prepared to accept the opponent’s contention that each of the features of the invention defined in Claims 1 and 12 was common general knowledge in the art at the priority date of the present claims. I am unaware of anything tending to suggest the common general knowledge is otherwise, and note that the applicant eventually conceded that “….we don’t dispute that this is a combination of known devices”.
69. However, it does not follow automatically from this that the invention as defined is lacking an inventive step. The general test to be applied in determining obviousness is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in the trade as at the priority date (The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262 at 270). It was also stated in the Wellcome case, supra, at 286 that:
"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."
70. On my reading of claims 1 and 12, there is not much to them. Nevertheless, in considering what might be considered to be a trivial combination of known integers I must also remember that "no smallness or simplicity will prevent a patent being good" (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (supra) at 249) and that I should be wary of any ex post facto dissection of the invention (Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited (supra)).
71. Bearing this in mind, I consider that the opponent has failed to provide sufficient evidence as to what a non-inventive person skilled in the art would do with these known integers. Even though I am satisfied that each of the individual steps and features of the method and system were known, nowhere do the declarants state that it would be obvious to combine these steps and features into a single method or apparatus. In this matter I have been urged by the opponent to look on the claimed invention as merely an old combination which has been, at most, subjected to slight variations but I find that the facts do not support that conclusion. What is claimed appears to be a new combination of integers and it is the selection of the integers of that combination out of perhaps many possibilities that must be shown to be obvious. To look at the invention in any other way would, in my view, be to fall into the trap of ex post facto analysis so often warned against.
Therefore, I find that, on the evidence, the invention defined by Claims 1 to 26 involves an inventive step.
Manner of Manufacture
72. The opponent submitted that the claimed invention was no more than the new use of a known data logger in conjunction with a known supply chain system consisting of a computer network and database. In Harwood v. Great Northern Railway Co., 35 LJQB 27 at page 38 it was stated:
"You cannot have a patent for a well known mechanical contrivance merely because it is applied in a manner or to a purpose which is analogous to the manner, or for the purpose in or to which it has been hitherto notoriously used."
73. There are three prerequisites to establish analogous use. Pope Appliance Corp v Spanish River Pulp & Paper Mills (1929) 46 RPC 23, says at page 56:
"The doctrine of analogous user only applies as to things in actual use."
Morgan v Windover (1890) 7 RPC 131, at page 137 says:
"...the mere adaption to a new purpose...if that purpose be analogous to which it has already been applied...and no invention is displayed in the manner in which it is applied, is not the subject for a patent."
In British Liquid Air v British Oxygen (1909) 26 RPC 509 at page 532:
"It is of course well-settled law that the application of a known device to its ordinary purpose under analogous circumstances is not good subject- matter for Letters Patent, because it does not involve invention. But this principle does not apply when the circumstances are not analogous, or when invention is required to adapt the device to the new circumstances."
74. In my opinion, the facts of the present case do not satisfy all of these principles, so as to establish analogous use. Whilst systems comprising data loggers, computer networks and databases are known, I do not consider that the evidence establishes the prior use of a system for monitoring a consignment as claimed. Even if systems comprising the same integers exist, it may well be that their use is not really analogous. In this situation, insufficient evidence has been presented to conclude that that the use of a known data logger in conjunction with a known supply chain system consisting of a computer network and database was an analogous use.
75. This argument also raises questions of “newness” that are worthy of consideration. In the decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449, the majority of the High Court concluded that "newness" was imported into s 18(1)(a) to the extent that that s 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles.
76. In the present case there is nothing on the face of the specification to suggest that the threshold requirement of inventiveness has not been met. To me the very existence of other patents for similar systems indicates that patentable subject matter may be present. The specification refers to some prior art, observes its disadvantages, and sets out objects for the invention which are directed at overcoming those disadvantages. Whilst individual features may be well known, there is nothing on the face of the specification that suggests that the combination claimed is not new. In my opinion, the question of whether such subject matter is new is best dealt with under the headings of novelty and inventive step. As the opponent has not demonstrated a lack of inventive step in light of what was known as revealed on the basis of the specification (indeed, they have not established lack of inventive step at all), they have not established that the threshold requirement of inventiveness per Philips is lacking.
77. The opponent also asserted that the claimed invention is not patentable because the claims merely define a “….wished for data logger [that] has not been invented yet but its desirable attributes are known”. I should note that this is an argument that appears to undermine any assertion that the claimed invention is no more than the new use of a known device.
78. A mere idea is not patentable subject matter. In Hickton's Patent Syndicate v Patents and Machine Improvements Co. Ltd., (1909) 26 RPC 339 at 348, it was said:
"No doubt you cannot patent an idea, which you have simply conceived, and have suggested no way of carrying it out, but the invention consists in the thinking of or conceiving something and suggesting a way of doing it.....I think you can have a Patent for an idea, which is new and original and very meritorious, if you suggest a way of carrying it out. If you do not so suggest, you cannot no doubt have a patent....".
79. In my view, to characterise the invention as an idea for a data logger with desirable attributes is inaccurate. It is clear from the specification that the invention relates to a method or system for consignment monitoring, and the claims reflect this. As I indicated previously, the invention involves a combination of features which I believe are adequately defined by the specification. The provision of specific hardware and/or software in the monitoring system which enable the data logging to occur would seem to me to be well within the capabilities of the skilled workman in the field, and the specification would thus not appear to lack sufficiency in this respect. Clearly, a practical application of a data logger with certain properties has been described and claimed, so I think that the claims are not directed to a "mere" idea or discovery, and are patentable in this respect.
80. In their final submission, the opponent contended that the claimed invention was no more than a mere collocation of known integers. It was argued that:
“One of the elements on the law of combinations is that it shouldn’t be a mere collocation of parts….there should be some benefit or result that is unexpected from the combination, and I think it is absent”.
81. The difference between a collocation and combination was set out in British Celanese Ltd. v Courtaulds Ltd., 52 RPC 171 at pages 193-194, where it was said:
"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."
82. In my view the allegation that the invention is directed to a mere collocation is without foundation. The claimed invention plainly answers the description "patentable combination" since the features that make up the invention are functionally dependent on one another. Furthermore, no real evidence was presented by the opponent to support the proposition that there was no working interrelationship between the integers. I am also aware that many patents have previously been granted for similar systems, (including the opponent's own evidence ES7 to ES11), and consider that the present invention has no less synergism than the prior art systems.
I am therefore of the view that the claimed invention is directed to more than a mere collocation of integers.
I conclude that all of the claims define a manner of manufacture.
CONCLUSION
83. I have found the description of the invention, and the clarity and fair basis of the claims to be adequate. I have also found the claimed invention is novel, has an inventive step, and is for a manner of manufacture on the available evidence.
I conclude Exago's opposition fails on all counts.
Having regard to Order 3 Rule 2 (4A) of the Federal Court rules, I direct the application may be sealed after forty (40) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
84. Both parties, irrespective of whether the application was granted or denied, argued that costs should be awarded in their favour. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations.
In actions before the Commissioner, costs usually follow the event. In this case I have found in favour of the applicant on all the issues raised. Considering all of the circumstances I award costs against the opponent.
R. W. J. Finzi
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Shelston IP, Sydney
Patent attorneys for the opponent: IP Strategies, Sydney
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