Ericsson Australia Pty Ltd v Aussie L.L.C. Pty Ltd
[2004] APO 13
•9 June 2004
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 697560 in the name of Aussie L.L.C. Pty Ltd
Title: Improvements Relating to Mobile Phones
Action: Final determination in an opposition by Ericsson Australia Pty Ltd under s 59 of the Patents Act 1990
Decision: Issued 09 June 2004.
Abstract
Final determination.
In his decision on the substantive opposition, the delegate found that claim 1 was not novel or inventive. The applicant filed amendments to replace claim 1 with new claims 1 to 4. It was found that these claims also lacked novelty or an inventive step.
The proposed amendments were a genuine attempt to satisfy the delegate's decision and as there was clearly patentable subject matter disclosed in the application, the applicant was given a further opportunity to propose suitable amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 697560 by Aussie L.L.C. Pty Ltd and opposition under Section 59 of the Patents Act 1990 by Ericsson Australia Pty Ltd.
BACKGROUND
Patent application 697560 in the name of Aussie L.L.C. Pty Ltd (hereinafter referred to as Aussie) was filed on 13 December 1996 by Newcom Technologies Pty Ltd (Newcom). The patent derives priority from provisional application PN7551, which was filed on 15 January 1996. The patent application was advertised accepted on 8 October 1998, and assigned to Aussie on 3 July 2001.
Ericsson Australia Pty Ltd (hereinafter referred to as Ericsson) filed notice of opposition to the grant of a patent on 8 January 1999. The parties were heard in relation to the substantive opposition in Canberra on 25 February 2003. In a decision dated 2 May 2003 (Aussie LLC Pty Ltd v Ericsson Australia Pty Ltd [2003] APO 20, which I will refer to as the earlier decision), it was found that claim 1 lacked novelty and inventive step. The applicant was allowed 60 days in which to propose amendments to overcome these deficiencies.
On 16 June 2003, Aussie requested leave to amend patent application 697560. Those amendments were found to comply with Section 102 of the Patents Act 1990 and were allowed unopposed on 27 January 2004.
Ericsson sought to be heard on the matter of final determination and to this end a hearing was held in Canberra on 18 March 2004. Mr Peter Franke, patent attorney of the firm Watermark, Sydney, assisted by Mr Simon Ellis, also of that firm, represented the opponent. The applicant had indicated previously that it did not wish to be heard but would rely on written submissions filed previously on 17 February 2004.
THE NATURE OF THE AMENDMENTS
For the sake of brevity I will refer to the claims as accepted as the old claims and the claims as subsequently amended as the new claims.
The amended specification ends with thirteen claims. The applicant has added four new claims to replace former claim 1. New claim 1, with differences from old claim 1 underlined, reads as follows:
“1A hand held digital mobile phone of a type having a transceiver and at least one subscriber identification module holder integrated within the handset and having a subscriber identification module of the type having an embedded microprocessor wherein there are provided at least two subscriber identification modules and switch means accessible to the user and adapted for the user to select one or other of the modules."
New claim 2, which is dependent from new claim 1, provides that the different subscriber identification modules respectively provide access to different mobile phone networks. It claims:
“2.A digital mobile phone as in claim 1 wherein each of the subscriber identification modules, when selected, allows the phone to gain access to an associated phone network, said network being a different network for each of the said subscriber identification modules."
Claims 3 and 4 are entirely new, and are as follows:
“3A digital mobile phone comprising at least two subscriber identification modules, said modules being of the type including an embedded microprocessor, and switch means arranged so that the user can change the user can change the switch means from one switch position to another switch position, thereby to select for electrical connection to the mobile phone one or another of said subscriber identification modules, each of said subscriber identification modules permitting said phone to access a respective associated mobile phone network as a function of the position of said switch means.
4A digital mobile phone as in claim 3, further including memory means provided in said phone and further including a software program associated with said memory means and a central processing unit to effect on a selected basis switching of the switch to one or another of said subscriber identification modules."
New claims 5 to 12, which are not in dispute, correspond to old claims 2 to 9.
DECISION
Novelty
The opponent submitted that the invention of new claims 3 and 4 is anticipated by the Nokia citation (EP 586 081). The citation discloses a digital cellular phone comprising at least two Subscriber Identification Modules (SIMs). These SIMs may either be passive memory cards, or active cards having an embedded microprocessor. Each SIM permits the phone to access a respective associated mobile network.
The applicant submitted that Nokia “…does not disclose the concept of being able to actively select between two or more SIMS”. In the earlier decision it was held that the concept of “preselection” as discussed in Nokia clearly falls within the scope of a “switch means” as envisaged by the applicant in their specification. Furthermore, the user may employ this “switch means” to manually modify the priority sequence in which the SIMs are used. In other words, the user may actively select between two or more SIMs.
10. Accordingly, I must come to the conclusion that the Nokia citation anticipates the invention of new claim 3.
11. New claim 4 further limits new claim 3 by providing for a memory means, a software program associated with said memory means and a CPU to switch between SIMs. Mr Franke directed my attention to column 4, lines 13 – 20 of the Nokia citation which discloses an internal microprocessor, a memory device, and “program instructions” for operating the phone. The program instructions are stored in the memory device which is coupled to the microprocessor.
12. In my opinion, there can be no closer association between a software program and a memory means than to have the program stored in the memory. I am satisfied that the Nokia citation anticipates the invention of new claim 4.
Inventive Step
13. Ericsson submitted that the only difference between new claim 1 and the Nokia citation is the requirement that the phone be “hand held”, and that this was a normal feature of digital phones at the priority date.
14. In their written submissions, the applicant appears to question the relevance of the Nokia citation when they argue that:
“The invention of the present patent addresses a completely different problem. Here a perfectly adequate handset is limited in its use by the charging or other policies of the GSM network provider. A competing provider whose policies are more congenial also exists. Such a situation is not contemplated by the Nokia citation. Thus the ability to switch between competing networks is at the heart of this invention. The Nokia document could not be considered to be relevant to this consideration.”
15. I find little merit in this argument, which fails for two reasons. First, the applicant’s own declarant, Dr Lindley, affirms the relevance of Nokia when she concedes at paragraph 40 of her declaration that the SIM cards in Nokia are provided to enable user access to different radio mobile networks. Though another of the applicant’s declarants, Mr Leske, argues against this interpretation by Lindley, I accord Dr Lindley’s material the greater weight, due to her knowledge, experience and independence. Second, the relevance of Nokia has already been determined previously, and on the basis of the High Court decision in R v Smith (Commissioner of patents); Ex Parte Mole Engineering Pty Ltd (1981) 147 CLR 340, I am unable to decide otherwise.
16. The specification itself admits to the existence of hand-held mobile phones when referring to the Nokia 2110 digital phone at page 2, line 16. The Applicant’s declarant, Mr John Hogarth, a director of Newcom Technology Pty Ltd states that on first meeting the inventor in January 1996, "He enthusiastically gave me a mobile phone to hold at that time and asked me what I was holding in my hand.” Mr Peter Sargeant, General Manager of AEC Products, refers to the availability of handsets before 1996 in his declaration. Similarly, Mr John Leske, who has worked on a project for Newcom, also refers to handsets in his declaration. The Opponent’s exhibits, RAK-4, RAK-6 and RAK-8, each show a hand held digital phone.
17. In my opinion, this evidence strongly suggests that hand-held digital mobile phones were well known in the art. Most importantly, there is nothing in the evidence which controverts this view. Overall, I am satisfied that the evidence establishes that “hand held” digital mobile phones were known at the priority date, and that the invention of claim 1 is not inventive in light of Nokia when combined with this common general knowledge.
18. New claim 2 further limits new claim 1 by specifying that each SIM allows access to a different phone network. The opponent submitted that “This is the whole point of having different SIMs – it is inherent in the problem described by the patentee”. As I understand it, the opponent’s argument is that there is no point in having multiple SIMs in a single handset unless they are to be used for access to different networks.
19. The specification admits that it is possible for a user to have the SIM card of more than one provider, and that “…in phones currently available, the card is not readily accessible for removal and replacement with an alternate subscriber identification module card”. The problem addressed by the specification is that it is inconvenient for a user to change from one SIM to another, as this typically involves removing the phone cover and/or battery, replacing the SIM, and then reversing the process. The specification recognises that “…there is considerable advantage to an end user to be able to choose the network,…” (see page 2, line 27), either to avail themselves of better reception or better pricing. The specification also states at page 3, lines 5 to 7 that:
“It is currently possible with the same phone to do this but with the effort involved in having to change over subscriber identification module cards, most people will either not consider doing so or will not be bothered in most cases.” [emphasis added]
20. To my mind, these statements clearly acknowledge that the purpose of having multiple SIMs is to allow for access to different networks, and that this was known at the priority date. Thus, I conclude that claim 2 is not inventive in light of the Nokia citation when considered together with this common general knowledge.
21. Even if my above analysis is flawed, and I was to accept that the use of SIMs to access different networks was not common general knowledge, I would find that claim 2 is not inventive in light of Nokia. I note that the citation does not specifically state that each SIM allows access to a “different network” in those terms. However, it does envisage the possibility at column 2 (lines 34 to 43) and column 4 (lines 21 to 56) which disclose that SIM1 contains a different set of data to SIM 2. The particular network to be used, along with other data such as the subscriber number, forms part of the data set of a SIM. Consequently, I believe that there has been an implicit disclosure of this feature. It is also consistent with the view expressed by Dr Lindley in her declaration. Again, paragraph 40 is germane, in which it is deposed that the SIM cards in Nokia are provided to enable user access to different radio mobile networks. Based on this evidence, it follows that claim 2 is not inventive in light of the Nokia citation.
22. Having determined that new claims 3 and 4 are not novel by virtue of the disclosure in Nokia, I also find that these claims lack an inventive step in light of this citation.
23. I will briefly consider the two other citations found relevant in the earlier decision, US 4677653 (Weiner et al.) and EP 690645 (Casio Computer Company Limited). The opponent submitted that new claims 1 to 3 are not inventive in light of the Weiner citation when considered together with the common general knowledge. Weiner discloses a digital cellular phone which can access more than one cellular phone network, thus taking advantage of different time rates and access rates. The user may activate a switch to individually select one of several modules, similar to passive SIMs, each of which allows access to a different network.
24. The citation therefore discloses all the features of new claim 1, with the exception that the phone is not hand held, and does not stipulate the use of SIMs with embedded microprocessors. I have already established that hand held phones were common general knowledge at the priority date. With regard to SIMs incorporating embedded microprocessors, I note that the earlier decision held that the term “SIM” encompassed both active and passive devices. In essence, it was found that both passive and active SIMs were known, and formed part of the common general knowledge at the time. I have no doubt that the teaching of Weiner when combined with these items of common general knowledge would have been obvious. Accordingly, I find that new claim 1 is not inventive in light of Weiner.
25. Weiner discloses that each module provides separate access to a telephone company. Claim 2 is not inventive in light of this document.
26. New claim 3 differs from the disclosure in Weiner by specifying that the SIMs include an embedded microprocessor. For similar reasons to claim 1, I find that new claim 3 is not inventive in light of this document. With regard to new claim 4, Weiner leads the person skilled in the art away from the invention, as it suggests that SIM card selection is purely by mechanical means. I conclude that new claim 4 has an inventive step in light of this document.
27. Casio discloses a hand held digital cellular phone which can access more than one cellular network and employs software switching to select between a plurality of identification codes in detachable memories. I am satisfied that this document discloses all of the features of new claims 1 to 4 except for SIMs with embedded microprocessors. Again, I have no doubt that new claims 1 to 4 are not inventive when Casio is combined with the common general knowledge regarding active SIMs.
CONCLUSION
28. I have found that the invention defined by new claims 3 and 4 is not novel in light of the Nokia citation, and that claims 1 to 4 are not inventive.
29. While there is clearly patentable subject matter present in the application (in particular new claims 5 to 12), the applicant has not elected, at this stage, to amend the specification in such a way as to comply with the original decision. I note that in ABB Power T & D Company Inc v Electrowatt Technology Innovation Corp [2002] APO 10 (26 March 2002) and John Andrew Willems v Total Energy Systems [1999] APO 67 (20 October 1999) the delegates refused the applications. Nevertheless, there was an implicit recognition in these cases that a further opportunity to amend could be given. In Plantagenet Holdings Pty Ltd v Natura-Min Pty Ltd [1998] APO 59 (15 October 1998), the delegate took the view that as a genuine attempt was made to propose amendments, a further period in which to propose suitable amendments was allowable.
30. I am of the view that the proposed amendments are a genuine attempt to satisfy the earlier decision, and I believe that the applicant should be afforded a further opportunity to propose suitable amendments. However, I will note that I am unable to identify any subject matter disclosed in the specification that could be brought into the embodiment defined by new claims 1 to 4 so as to render these claims novel and inventive. Consequently, I do not consider that it would take long to draft suitable amendments to remove the offending claims. Hence, I will give the applicant 14 days from the date of this decision to propose suitable amendments. In the absence of any request to amend, the Commissioner may set the application for a hearing with a view to refusal of the application.
COSTS
31. Costs normally follow the event and I see no reason to depart from this in this case. The opponent has been successful in this action and consequently I award costs against the applicant.
R. W. J. Finzi
Delegate of the Commissioner of Patents
09 June 2004
Patent attorneys for the applicant: Collison & Co, Adelaide
Patent attorneys for the opponent: Watermark, Sydney
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