Global Blue S.A. v Visa U.S.A. Inc. - [2018] APO 86

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Global Blue S.A. v Visa U.S.A. Inc. [2018] APO 86

Patent Application: 2015201705

Title:Application currency code for dynamic currency conversion transactions with contactless consumer transaction payment device

Patent Applicant:                   Visa U.S.A. Inc.
Opponent:  Global Blue S.A.
Delegate:  Isaac Tan
Decision Date:  30 November 2018
Hearing Date:  11 September 2018 in Sydney, NSW

Catchwords: PATENTS – section 59 – fintech – computer implemented invention – card payment system – financial services – dynamic currency conversion (DCC) – EMV standard – request to withdraw application refused – application in a state of lapse – regulation 13.3 and section 223 considered – whether the Commissioner has any power to decide a lapsed application – statutory interpretation – read in light of the mischief the statute was designed to overcome and of the objects of the legislation – section 60 and regulation 5.20 indicates that there is no discretion – the Commissioner has the power to refuse an application that has lapsed or is in a state of lapse – lack of novelty and inventive step under section 18 established – lack of inventive step in light of common general knowledge alone established – costs awarded against the applicant – application refused

Representation: Applicant:
Phillips Ormonde Fitzpatrick (Previously Spruson & Ferguson)
Opponent:
Andrew Fox SC, Counsel for the Opponent
Jane Owen, Partner of Bird & Bird
Rebecca Currey, Senior Associate of Bird & Bird
Gavin Ingram, General Counsel Asia Pacific/VP Strategic Planning of Global Blue

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015201705

Title:Application currency code for dynamic currency conversion transactions with contactless consumer transaction payment device

Patent Applicant: Visa U.S.A. Inc.
Date of Decision: 30 November 2018
DECISION
The Opposition is successful. All of the Grounds have been made out.
I direct that the application be refused.
Costs awarded according to Schedule 8, against the Applicant.
REASONS FOR DECISION
Background

Australian patent application 2015201705 (application) was filed on 2 April 2015 in the name of Visa U.S.A. Inc. (Applicant) as a divisional of AU 2009279757 (‘757 application). The application claims a priority date of 4 August 2008 from international application PCT/US2009/052755 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 4 August 2009. The application is one of a series of pending divisional applications AU 2017206203, AU 2018200622 and AU 2018200623.
In relation to the ‘757 application, a Notice of Acceptance was issued on 30 January 2015 which indicates that the ‘757 application had been accepted on 28 January 2015, and will be advertised in the Supplement to the Australian Official Journal of Patents (the journal) on 12 February 2015. On 11 May 2015, a Notice of Opposition was filed by Griffith Hack on behalf of Global Blue S.A. (Opponent). The Statement of Grounds and Particulars was filed on 11 August 2015, and Evidence in Support on 11 November 2015. On 19 January 2016, a request was filed to amend the Statement of Grounds and Particulars to better particularise the grounds of opposition. The amended SGP was allowed on 9 February 2016. On 11 February 2016, the Applicant filed a request to withdraw the ‘757 application under section 141 of the Patents Act 1991 (Cth) (the Act). Notice of the withdrawal was advertised in the journal on 3 March 2016. As a result of the withdrawal, costs were awarded according to schedule 8 against the Applicant.
On 11 April 2017, a Notice of Acceptance was issued indicating that the application has been accepted on 10 April 2017, and is to be advertised in the journal on 20 April 2017. A Notice of Opposition was filed on 19 July 2017 by Bird & Bird on behalf of the Opponent. The Statement of Grounds and Particulars (SGP) was filed on 19 October 2018. On 18 January 2018, a request was filed to amend the SGP. This was allowed on 7 February 2018.
On 16 March 2018, the Applicant requested that the application be withdrawn pursuant to section 141 of the Act. On 22 March 2018, a delegate responded stating that under section 141(1)(b), the Commissioner must consent to the withdrawal of an opposed application. The delegate noted that there appears to be substantial overlap between the application and a number of pending divisional applications. In the present circumstance, the delegate stated:
the Commissioner will consent to the withdrawal of the application if the Applicant makes an undertaking to not pursue the same, or substantially the same, invention as has already been opposed in any divisional applications, whether already filed or not. Such an undertaking would require the Applicant to not pursue in any further family member application any claims overlapping in scope with the accepted claims of the present application. That is, there should be nothing that would simultaneously infringe any claims from the present application and any claims of any further application, if those claims had been granted
The Applicant did not provide an undertaking. The Applicant had also confirmed on 14 May 2018, that they will not attend the hearing and will not lodge any written submissions.
A hearing was held in Sydney, on the 11 September 2018, at the office of Bird & Bird.
On 20 September 2018, a request was filed to change the agent for the application from Spruson & Ferguson to Phillips Ormonde Fitzpatrick.
Applicable Law
The application was filed after 15 April 2013 and is governed by the Patents Act 1990 and Patents Regulations 1991 (the Regulations) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
Thus the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
Evidence and Submissions
The sole piece of evidence in the present matter, is evidence filed as Evidence in Support. It consists of a declaration by Geoffrey Robert Coffill (Coffill) dated 17 January 2018 with exhibits GRC-1 to GRC-5.
The Grounds of the Opposition
The SGP as amended on 18 January 2018, identifies grounds under Section 18(1)(a), Section 18(1)(b)(i), Section 18(1)(b)(ii) and Section 40(3). At the hearing, the Opponent only pressed the grounds under Section 18(1)(b)(i) for lack of Novelty, and Section 18(1)(b)(ii) for Lack of Inventive Step.
The law
Section 18(1)(b) of the Act provides as follow:
Patentable inventions for the purposes of a standard patent
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step
At the relevant time, the ‘prior art base’ is provided by section 7(1):
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Schedule 1 provides a dictionary of expressions and relevantly, ‘prior art information’ is defined as information that is part of the prior art base at the relevant time as:
“prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
Does the Commissioner have power to decide a lapsed application
The application is presently in a state of lapse due to non-payment of renewal fees due 4 August 2018.[1] However, if the fee is paid by 4 February 2019, and an additional fee is paid, then the application is taken not to have lapsed.[2] After the grace period, it may be possible for the Applicant to request an extension of time under section 223 of the Act to pay the relevant fee, and revive the application.[3]
[1] Patents Act 1990 (Cth), s142.
[2] Patent Regulations 1991 (Cth), Reg 13.3(1A).
[3] Patent Regulations 1991 (Cth), Reg 22.11.
For payment of the continuation fee, regulation 13.3 provides that:
Prescribed period: continuation fees
(1) For paragraph 142(2)(d) of the Act:
(a) a continuation fee for an application for a standard patent is payable for a relevant anniversary at the last moment of the anniversary; and
(b) the period in which the fee must be paid is the period ending at the last moment of the anniversary.
(1A) However, if the continuation fee is paid within 6 months after the end of the relevant anniversary (6 month period):
(a)     the period mentioned in paragraph (1)(b) is taken to be extended until the fee is paid; and
(b)    the continuation fee includes the additional fee stated in item 211 of Schedule 7; and
(c)     the additional fee is payable from the first day of the 6 month period.
At the hearing, I raised a concern with the Opponent regarding whether the Commissioner has the power to make a decision on an application that is lapsed, noting that there is a lack of authorities addressing this specific issue.[4] In Esso Research and Engineering Co v Commissioner of Patents, the High Court considered the effect of the lapsing of an application:[5]
…nothing the Commissioner could deal under the Act, and nothing therefore with which Appeal Tribunal could order him to deal.
So far as the meaning which it attributes to the word "lapse" is concerned, I am disposed to agree with this argument. I think that the word "lapse" in s. 54 connotes finality, and that the intention is that, when the time for acceptance has passed and there has been no acceptance, the application is to be no longer regarded as subsisting: cf. Re Freeman and Heatrae Ltd.'s Application (1959) RPC 25, at p 27 , where the words under consideration were "deemed to be abandoned".
[4] See, eg., Esso Research & Engineering Co v Commissioner of Patents [1960] HCA 31; 102 CLR 347; Miles v Commissioner of Patents [2014] FCAFC 109; 107 IPR 467.
[5] Esso Research and Engineering Co v Commissioner of Patents [1960] HCA 31; 102 CLR 347 at [7]-[8].
In The Proctor & Gamble Company, the Delegate considered that where an application had lapsed in the sense that the application could only be revived under section 223, the application was considered to ‘no longer exists for the purposes of the Act.’[6] Although the delegate concluded that there was thus nothing to refuse, he noted that the application ‘would be refused if and when it is revived.’[7] However it is worth noting that this decision was made in relation to an examiner objection hearing under section 45, concerning examination of a patent application.
[6] The Proctor & Gamble Company [2011] APO 14 at [39]-[44].
[7] Ibid [45].
This is different to the present case where the application is subject to an opposition under section 59 of the Act, is simply in a state of lapse, and may be deemed to have not lapsed upon payment of a continuation fee within the grace period. It is important to note that in the event the continuation fee is not paid by the end of the grace period, the application is taken to have lapsed on the anniversary date, not the expiry of the grace period of six months.[8] As set out in Miles v Commissioner of Patents:[9]
Regulation 13.3(1A) provides nothing more than a grace period for the applicant to pay the continuation fee. It is still part of the period prescribed. Upon payment of the continuation fee, the period is set and determined provided it is paid within the six month period. In this case, the patent application did not lapse at the end of the six month grace period, or at all. It was refused at a time when it was still on foot. It was on foot on [the date the application was refused] because on that date the period prescribed for the purposes of paragraph 142(2)(d) of the Act, within which the appellant was to pay a continuation fee, had not yet expired. To reiterate, that period was prescribed by reg 13.3(1) and (1A) in combination.
[8] Miles v Commissioner of Patents [2014] FCAFC 109; 225 FCR 67 at [5]-[26].
[9] Ibid [12].
The Opponent submits that if it was the case that an Applicant could avoid an opposition to an application by simply refraining from paying a renewal fee, this would be inconsistent with the intention of the Act and the Regulations. Moreover, section 60 and regulation 5.20 makes it clear that where an opposition is requested, the Commissioner must conduct a hearing in accordance with the Regulations, and must decide the Opposition.
Section 60 concerns hearing and decision by the Commissioner and provides that:
(1) Where the grant of a standard patent is opposed, the Commissioner must decide the case in accordance with the regulations.
(2) The Commissioner must give the applicant and the opponent a reasonable opportunity to be heard before deciding a case.
(3) The Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not.
(3A) If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.
(3B) The Commissioner must not refuse an application under this section unless the Commissioner has, where appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any ground of opposition and the applicant has failed to do so.
(4) The applicant, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under this section.
Regulation 5.20 provides that:
(1) This regulation applies to an opposition if:
(a) the periods for filing evidence have ended; and
(b) the notice of opposition has not been withdrawn under regulation 5.26; and
(c) the opposition has not been dismissed under Part 5.4 or heard and decided under regulation 5.19.
(2) The Commissioner:
(a) must hold a hearing of the opposition if requested by a party in writing; or
(b) may decide, on the Commissioner’s own initiative, to hold a hearing of the opposition.
(3) The hearing may, at the Commissioner’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(4) If the Commissioner decides on an oral hearing:
(a) the Commissioner must notify the parties of the date, time and place of the hearing; and
(b) the opponent must file a summary of submissions at least 10 business days before the hearing; and
(c) the applicant must file a summary of submissions at least 5 business days before the hearing; and
(d) the Commissioner must give a copy of each party’s summary of submissions to the other party as soon as practicable.
(5) The Commissioner must:
(a) decide the opposition; and
(b) notify the parties of the Commissioner’s decision.
The Opponent’s submission is not an unreasonable interpretation. It is well established that, in accordance with section 15AA of the Acts Interpretation Act 1901:
In interpreting a provision of an Act, the interpretation that would best achieve the purpose or object of the Act (whether or not that purpose or object is expressly stated in the Act) is to be preferred to each other interpretation.
Where a provision stipulates that a power or function must be performed, as opposed to may, this indicates that there is no discretion as to whether the relevant action should be performed.[10] The public interest lies in the efficient and orderly processing of matters before the Patent Office, and in ensuring that invalid patents are not granted.[11] There would be uncertainty for an application to exist, even in a lapsed state, as to the potential scope of the claims if said application should be granted. Moreover, it is possible to perform certain actions, such as conducting a hearing and decide certain matters on an innovation patent that has expired,[12] or extend the period to attain acceptance where an application would have lapsed otherwise.[13]
[10] Acts Interpretation Act 1901 (Cth), s33.
[11] Vangedal-Nielsen, Erling & Ors v. Smith, Francis John & Ors [1980] FCA 190; 33 ALR 144. See also British Telecommunications Public Limited Company v Telstra Corporation Limited [2000] APO 50; Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8; 128 IPR 173; Bragel International Inc v Renee Qin and Lifeglo Pty Ltd [2005] APO 42.
[12] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2018] APO 83.
[13] See, eg. Academisch Ziekenhuis Leiden and BioMarin Technologies B.V. [2018] APO 49; Apple Inc. [2018] APO 54; International Stem Cell Corporation [2016] APO 52; 123 IPR 142.
In any event, it ‘is well established in statutory construction, where it is clear that “the apparently plain words of a provision” may “wear a very different appearance” when they are “read in the light of the mischief the statute was designed to overcome and of the objects of the legislation”.’[14] Relevantly, the Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 permits the Commissioner to refuse an Applicant’s request for leave to withdraw an opposed patent application, as is the current case. The reason for doing so is:[15]
withdrawal can be used to side-step opposition proceedings. Where an application has been opposed, an applicant can withdraw the opposed application and pursue the invention in a divisional application.
This allows the applicant to avoid the scrutiny of opposition proceedings whilst continuing to pursue the opposed invention in the divisional application. This frustrates the public interest in early determination of an application. It can also put an opponent to the unnecessary expense of having to prepare for an opposition that does not proceed, then having to monitor and possibly oppose the divisional application.
[14] Cherry v Steele-Park [2017] NSWCA 295 at [85] citing CIC Insurance Ltd v Bankstown Football Club Ltd [1997] HCA 2; 187 CLR 384 at [88].
[15] Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, Page 77 Item 11.

While the above does not directly relate to matters under section 60 of the Act, it does support a view of the mischief. Moreover the Applicant has, as is within their rights, filed a number of divisional applications.[16] For the Commissioner to have no power to decide a matter brought forth by a party, due to the action or inaction of another party, is clearly at odds with the purpose and intention of the Act. In my view, it would make little sense that an Applicant would revive an application, by paying the relevant fee or via a request under section 223, with the knowledge that the application would be refused.
[16] See, eg., Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 at [33]; Kafataris v Davis [2016] FCAFC 134 at [71].
Typically, the outcomes which may follow from a section 59 opposition includes that the application be directed to grant, that the Applicant be allowed an opportunity to propose suitable amendments, or that the application be refused. The first outcome is one which is advantageous to the Applicant, while the second outcome would be considered neutral. Both outcomes would require specific actions to be taken, with the responsibility to perform said actions falling upon the Applicant. It logically follows that the application must be restored or revived before this can occur. However, the outcome that the application is refused is an action which strongly advantages the Opponent. Clearly, it would appear that Parliament did not intend the Commissioner to have no power to refuse an application following an opposition under section 59, nor could it be said to overcome the mischief identified in the Raising the Bar amendments.
On this basis, it appears clear to me that for the purposes of a section 59 opposition, the Commissioner has the power to refuse an application, regardless of whether it had lapsed or is currently in a state of lapse.
The specification
The invention of the present opposition relates to a transaction system concerning consumer portable transaction payment devices which allows consumers to make purchases or to obtain cash. Some examples include credit cards, debit cards, charge cards and various other types of cards. Typically, a credit card would be issued by a local bank which allows transactions to be conducted in a particular currency. However with the increase in international travel, globalisation of business and electronic commerce, cardholders may wish to conduct transactions in a foreign currency using their card. Where the currency of a transaction is different to the local currency of the card issuer, the transaction will be conducted in the foreign currency and converted to the local currency, in accordance with an exchange rate.
According to an aspect of the present invention, the payment device may be in the form of a ‘Contactless Consumer Portable Transaction Payment Device’ (CCPTPD), where the data stored may be read wirelessly. Some examples of CCPTPD includes Mastercard’s PayPass™, and Visa Inc.’s PayWave™. Encoded within the data, is an ‘Application Currency Code’ (ACC) which may be used by the merchant to retrieve a currency conversation rate, plus any applicable extra currency related charge. Contactless payments may be facilitated by use of near field communications (NFC) into mobile devices:[17]
NFC is an open standard communication system that was designed by Philips and Sony Corporation, and enhanced by the NFC forum. NFC used Radio Frequency Identification (RFID) based technology and must comply with various standards and operating protocol/frequency for RFID.
[17] Specification, Page 4 Lines 4–7.
The specification then goes on to describe a standards body known as EMVco, who manages, maintains and enhances the EMV^® Integrated Circuit Card Specifications for chip-based payment cards and acceptance devices, including point of sale (POS) terminals and Automatic Teller Machines (ATM).[18] However, while the Visa PayWave™ system does use data elements as defined by the EMV standards body, the specification notes that the PayWave™ contactless payment transaction need not be a standard EMV transaction.
[18] Ibid Page 2 Lines 1–14.
The specification then goes on to describe ‘Dynamic Currency Conversion’ (DCC) which is:[19]
a service offered at Point-of-Sale terminals (POS) and ATMs in which cardholders may elect to have a transaction converted to their card billing currency instead of making a payment in a merchant’s local currency. For contactless transaction involving a chip card, there is an opportunity to identify candidate transactions for the DCC system.
[t]he DCC works by allowing foreign merchants to calculate a bill for a contactless transaction that is charged in a preferred currency of the cardholder making a purchase, rather than the local currency of the merchant. DCC occurs during a contactless transaction at the point of sale (POS), where an exchange rate is applied that has been determined by technology partners through the merchant’s bank. The DCC service, in this implementation, is offered to merchants by technology providers through the merchants’ banks. As the DCC service is applied at the point of sale, neither the transaction hander (i.e. Visa, Mastercard, etc.) nor the issuer of the account of the card being used sets a rate for the DCC service. As such, this implementation uses the DCC as a way of transferring the foreign exchange margin that the issuer normally makes when a cardholder uses the card’s account outside of the issuer’s country. Accordingly, the transfer is not made by the issuer but rather by the merchant’s acquirer or the merchant in the country where the transaction the account takes placed.
[19] Ibid Page 4 Lines 25–29; at Page 5 Lines 20–31.
Figure 2 is a flow chart of an exemplary process, in which DCC can be offered to conduct a contactless payment at POS terminals and/or ATM, and is provided below:
As shown above, figure 2 first involves:[20]
[a]t steps 202 through 206 in method 200 of FIG. 2, an EMV transaction is initiated and if the Integrated Circuit Card (ICC) of the CCPTPD requires terminal resident data to initiate the financial transaction, it will communicate a list of data elements using an EMV-specific data element list (e.g., the EMV Processing Options Data Object List (PDOL)). Step 206 illustrates a step in which wireless communication of data from a CCPTPD to an interrogating card reader occurs, where the card reader is in communication with the POS.
At step 208, if the Application Currency Code (EMV Tag ‘9F42’) is found in the data read contactlessly from the CCPTPD, method 200 moves to step 210 at which the POS may determine if the transaction is DCC eligible at step 214 and, if so, then method 200 proceeds to step 216 at which a calculation is made as to the DCC offer. If the transaction is not DCC eligible, the method 200 moves to step 212 at which the POS may continue with the current EMV transaction. Also at step 221, if the Application Currency Code (EMV Tag ‘9F24’) has not read in the data contactlessly from the CCPTPD, then the POS may use alternate means to determine if the transaction is DCC eligble. For instance, the Primary Account Number (PAN) can be used by an application to determine DCC eligibility.
At step 216 where a calculation is made as to the DCC offer, if the transaction is eligible for DCC, however identified, the transaction will use the same means to obtain a currency conversion rate as is the case for standard non-smart card (i.e., non-chip) logic. The holder of the CCPTPD should then be offered the DCC option according to payment system rules.
At step 218, a query is made as to whether the DCC option is not elected by the holder of the CCPTPD. If not elected, then the method 200 moves to step 224 at which the current EMV transaction can continue in the local currency. Otherwise, method 200 moves to step 220 at which the POS checks whether the amount of the financial transaction, an Authorized Code (EMV Tag '9F02') and/or a Transaction Currency Code (EMV Tag '5F2A'), were requested in the EMV's list (e.g. the PDOL). If the amount and/or the transaction currency were not requested in the EMV's list, method 200 moves to step 224 where the POS should continue with the amount and currency adjusted according to the DCC selection. If the amount and/or the transaction currency were requested in the EMV's list, method 200 moves to step 222 at which the current EMV transaction should be terminated and the transaction restarted, using the same Application Identifier (AID), with the amount and currency adjusted according to the DCC selection, preferably without intervention by the holder of the CCPTPD. The restarted EMV application should follow the normal EMV transaction flow and need not involve any further DCC activity.
[20] Ibid Page 12 Lines 1–33.
The claims
The specification contains 3 independent claims and 9 dependent claims. Independent claims 1, 5 and 9 are provided below:
Claim 1
A method comprising:
wirelessly reading data stored in memory of a Contactless Consumer Portable Transaction Payment Device (CCPTPD) to conduct a transaction;
parsing the data read from the CCPTPD, using a predetermined format corresponding to the data being read, to obtain a currency code associated with an account;
determining from the parsed data whether the account corresponds to a domestic
account or an international account;
when the account corresponds to a domestic account, forming an authorization request message so as to include a total amount of the transaction in a first currency;
when the account corresponds to an international account:
determining whether a second currency associated with the account is supported for dynamic currency conversion;
when the second currency is supported for dynamic currency conversion:
obtaining a conversion factor that includes a conversion rate from
the first currency to the second currency, wherein additional currency conversion charges are included in the conversion factor;
applying the conversion factor to the total amount in the first currency to derive the total amount in the second currency; and
forming an authorization request message so as to include the total amount of the transaction in a second currency; and
when the second currency is not supported for dynamic currency conversion, forming an authorization request message so as to include the total amount of the transaction in the first currency; and
sending the authorization request message to a payment processing entity to request authorization.
Claim 5
A method comprising:
wirelessly reading data stored in memory of a Contactless Consumer Portable Transaction Payment Device (CCPTPD) of a consumer to conduct a transaction;
parsing the data read from the CCPTPD, using a predetermined format corresponding to the data being read, to obtain a currency code associated with an account;
determining from the parsed data whether the account corresponds to a domestic account or an international account;
when the account corresponds to a domestic account, forming an authorization request message so as to include a total amount of the transaction in a first currency; and
when the account corresponds to an international account:
obtaining a conversion factor that includes a conversion rate from the first
currency to the second currency, wherein additional currency conversion charges are included in the conversion factor;
applying the conversion factor to the total amount in the first currency to derive the total amount in the second currency;
rendering a display including the total amount in a second currency;
receiving input indicating whether the total amount in the second currency
for the transaction is acceptable by the consumer;
when the input indicates that the total amount in the second currency for the transaction is not acceptable by the consumer, forming the authorization request message so as to include the total amount in the first currency; and
when the input indicates that the total amount in the second currency for the
transaction is acceptable by the consumer, forming the authorization request message so as to include the total amount in the second currency; and
sending the authorization request message to a payment processing entity to request authorization.
Claim 9
A method comprising:
wirelessly reading data stored in memory of a Contactless Consumer Portable Transaction Payment Device (CCPTPD) to conduct a transaction;
parsing the data read from the CCPTPD, using a predetermined format corresponding to the data being read, to obtain a currency code associated with an account;
determining from the parsed data whether the account corresponds to a domestic account or an international account;
when the account corresponds to a domestic account, forming an authorization request message so as to include a total amount of the transaction in a first currency;
when the account corresponds to an international account:
obtaining a conversion factor that includes a conversion rate from the first currency to the second currency, wherein additional currency conversion charges are included in the conversion factor;
applying the conversion factor to the total amount in the first currency to derive the total amount in the second currency; and
forming the authorization request message so as to include the total amount of the
transaction in a second currency; and
sending the authorization request message to a payment processing entity to request authorization.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the skilled addressee as:[21]
...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.
[21] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481;71 IPR 615 at [16].
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:[22]
He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.
[22] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70].
However in AstraZeneca AB v Apotex Pty Ltd, the High Court noted that:[23]
The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.
[23] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
The sole piece of evidence in the present opposition is provided by Geoffrey Robert Coffill. Part of Mr Coffill’s declaration refers to a statutory declaration made previously in the opposition to AU 2009279757 (first declaration). The First declaration states:[24]
I am a Fellow of Financial Services Institute of Australasia (FINSIA) and I have worked in the Banking, Financial Services, and Credit Card industry for over 35 years in Australia. My background and experience is set out in my C.V. which is attached as Exhibit GRC-1.
[24] First declaration, [3].
I have reviewed Mr Coffill’s curriculum vitae, and briefly note that he has ample experience in managing projects and providing consultation services related to the implementation, and procurement of, electronic transaction and payment technology. Relevantly, he has direct experience with DCC technologies and has held positions at the Commonwealth Bank, Travelex, ING Direct and Strategic Payment Services (a joint venture owned by MasterCard, Bendigo and Adelaide Bank). It is clear that Mr Coffill is quite capable in assisting organisations on their technological requirements. I am satisfied that Mr Coffill is suitable to provide evidence as a person skilled in the art.
Claim Construction
The rules of construction are well established. In Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd, Stone J set out that:[25]
[i]t is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim.
[25]Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd [2006] FCA 261 at [16] citing Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; Decor Corporation Pty Ltd (formerly Brian Davis & Company Pty Ltd) & Anor v Dart Industries Inc. [1988] FCA 682; Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890.
If the claims are clear and unambiguous, ‘[i]t is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification’.[26]
[26] Ibid [17] citing Welch Perrin &Co. Pty. Ltd. v. Worrel [1961] HCA 91. See also Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318, [39]; Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) [2006] FCA 1787; 71 IPR 46.
Moreover, as noted by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[27]
the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification.
[27] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118] citing Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 at [67].
The Opponent submits that only the term ‘conversion factor’ requires further consideration. Mr Coffill explains that this term:[28]
is used to describe the factor that is applied to calculate the value of the transaction in the second currency. The conversation factor is distinct from a conversion rate, which is aligned to an exchange rate. This is because the conversation factor is said to include the conversion rate and any additional conversion charges.
[28] Coffill, [15].
This is not inconsistent with the specification, which defines that the ‘conversion factor’ includes ‘a conversion rate from the first currency to the second currency plus any additional currency conversion charges, and the conversion factor is applied to the total amount in the first currency to derive a total amount in the second currency.’[29] I can see no reason not to adopt Mr Coffill’s interpretation.
[29] Specification, Page 7 Lines 10–14.
Novelty
It is well established that the test for novelty is as described by Besanko J in Aspirating IP Limited v Vision Systems Limited:[30]
The test for anticipation or want of novelty is the same as that for infringement and generally it is appropriate to ask whether the alleged anticipation would, if the patent were valid, constitute an infringement. That was the test enunciated in Harwood v Great Northern Railway Co (1865) 11 HLC 654; 11 ER 1488 and it has been applied ever since (see, for example, Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 per Aickin J). To satisfy the test, the prior document or act must involve or incorporate all of the integers of the claim under consideration.
[30] Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [165]; See also Bristol-Myers Squibb Co. v FH Faulding & Co. (2000) 97 FCR 524 at [66]; Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (2005) 68 IPR 1 at [313].
However, the reverse infringement test is not applied by simply asking whether something within the prior art document would, if carried out after the grant of the patent, infringe the invention as claimed. Rather, ‘[i]t must also be shown that the Specification contains clear and unmistakable directions so to use it.’[31] As stated by the Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[32]
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.
[31] Flour Oxidizing Company Ltd v Carr & Co Ltd [1908] 25 RPC 428 at 457; See also Canadian General Electric Co Ltd v Fada Radio Ltd (1930) 47 RPC 69.
[32] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]; See also ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (2000) 106 FCR 214 at [51].

The ‘stringency’ upon which a prior art document is to be assessed in relation to novelty is set out in Samsung Electronics Co. Limited v Apple Inc. where the full court stated:[33]
It is trite law that, if the alleged paper anticipation is to deprive an invention of novelty, it must clearly disclose each and every essential feature of that invention, as claimed. This principle has its genesis in Lord Westbury’s seminal statement in Hill v Evans (1862) 4 De GF & J 288; 1A IPR 1 at 7 that “the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent”, a statement which Lord Reid described in C. Van der Lely N.V. v Bamfords Limited [1963] RPC 61 at 72 as “universally accepted”. The stringency with which the prior disclosure is to be assessed in order to be novelty-destroying has been discussed in a number of decisions in this Court, most notably in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 and Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 and, more recently, in H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151. It is not necessary to set out the discussion in those cases of the relevant principles. It is enough to note that a prior publication will not amount to an anticipation of an invention claimed as a combination if it discloses some, but not all, of the essential features of that combination.
[33] Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 at [127].
The sole document raised by the Opponent is Australian Patent 2007100392 B4 entitled ‘Transaction system supporting dynamic currency conversion’, in the name of Pulse International Pty Limited, with a publication date of 14 June 2007 (Pulse). According to the abstract of Pulse, the disclosed invention relates to:[34]
a method of performing a funds transaction that includes providing the option to perform the transaction using dynamic currency conversion and apparatus for performing dynamic currency conversion. The method may include identifying whether a transaction is eligible for dynamic currency conversion and if so allowing an operator to enter a nominated currency and subsequently conducting the transaction in the nominated currency. Otherwise the transaction may be performed in a default currency.
(references to figures omitted)
[34] Pulse, Abstract.
Generally, Pulse refers to a method of performing a transaction using DCC. This involves firstly, receiving information that identifies an account at a transaction terminal, using said information to determine whether said transaction is eligible for DCC and depending on the DCC eligibility, performing a transaction using DCC or in a default currency.[35] One embodiment of how this process may be performed is illustrated in Figure 1 and 2a, and described as follows:[36]
[i]n step 10 particulars of a transaction are received from the POS terminal 7 of a merchant 2 by the system of an acquirer 3…the transaction particulars may include information identifying an account of a payor, for example a transaction account of the cardholder 1, the transaction amount and the identity of the merchant 2. In a card payment system, this information is usually acquired at a point of sale (POS) terminal by swiping a magnetic stripe card through a suitable reader, by inserting a smartcard into a smartcard reader or by passing an encoded card near a card proximately reader, and by entering or receiving the transaction value.
At acquirer 3, in addition to the usual authorisation process, a check is made as to whether the transaction is eligible for dynamic currency conversion (DCC). An eligible transaction is one where the billing currency of the cardholder 1 is the same as their local currency and where the local currency of the cardholder 1 is the same as their local currency and where the local currency is a currency accepted by the card scheme administrator 5 for settlement of the transaction.
If it is determined that the transaction is not eligible for DCC, then the transaction is performed in the merchant’s local currency and the transaction is completed in the usual manner at step 18, with a receipt showing details of the transaction provided to the cardholder 1 in step 19. Step 18 may require the cardholder 1 to accept a DCC offer, which shows the original amount in the merchant’s local currency, the converted transaction amount, optionally together with or including any additional fees charged for foreign exchange.
If the transaction is deemed eligible for DCC, the POS terminal 7 queries the operator whether DC is required (step 14). This may be achieved by a simple message displayed on a display of the POS terminal 7 that requests a yes or no answer, or by prompting the operator to ask the cardholder to nominate a preferred currency…the operator must proceed through steps 14 and 15 for every transaction that is eligible for DCC. To determine whether DCC is required, the operator, which is usually an employee of the merchant 2, of the POS terminal 7 asks the cardholder 1 whether they would like their transaction to proceed in their local currency or refers to a sign that explains the options for selecting other preferred currencies in which to perform the transaction.
If the operator indicates that DCC is required in step 15, the process proceeds to step 16. In step 16, the POS terminal queries the operator for an indication of the currency that is required. The operator asks the cardholder 1 what their local or preferred currency is and then enters the currency nominated by the cardholder 1. The operator or cardholder then may enter a currency code or other identifier into the terminal for that currency. The operator may be provided with a table listing the currencies eligible for DCC and their corresponding codes or identifiers.
(emphasis added in quote with irrelevant parts omitted)
[35] Ibid Page 4 Line 21–Page 5 Line 19.
[36] Ibid Page 11 Line 4–Page 12 Line 17.
Although the Opponent has provided submissions in relation to the relevance of Pulse to the independent claims,[37] in my view, the above description (particularly the parts highlighted) is sufficiently clear that further explanation is not required. Consequently, independent claims 1, 5 and 9 are anticipated by Pulse. Similarly, claims 4, 8 and 12 are also anticipated as they relate to an acceptance point device comprising computer readable code for executing the method described by claims 1, 5 or 9. In relation to dependent claims 2, 6 and 10, Pulse clearly describes that a CCPTPD is read by a Point of Service (or sale) terminal. Claims 4, 8 and 12 are anticipated for the same reason.
[37] Opponent Submissions, [19]-[29] and Annexure A; Coffill, [49]-[60].
However, Pulse does not describe the features of claims 3, 7 or 11. While Pulse does state that the information contained in a card may be obtained by passing said card near a card proximately reader, it does not follow that this would necessarily be one of NFC protocol with an RFID enabled card reader, Bluetooth communications apparatus, Wi-Fi communications apparatus, infrared communications apparatus, RFID communications apparatus, or combinations thereof.
Therefore, I find that claims 1 – 2, 4 – 6, 8 – 10 and 12 are not novel in light of Pulse.
Inventive Step
In Albany Molecular Research Inc v Alphapharm Pty Ltd, Jessup J conveniently laid out the relevant principles applying to Section 18(1)(b)(ii) for lack of inventive step:[38]
Armed with common general knowledge, and possibly also with one of the kinds of information referred to in s 7(3), the invention in question will have been obvious to the skilled person referred to in s 7(2) if he or she “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”: Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, 286; Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411, 432 [50]. The content of the concept of “a matter of routine” approved by the High Court in the latter case was that provided by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157, 187-188:
Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art … directly be led as a matter of course to try [that which was invented under the patent in suit] … in the expectation that it might well produce [the solution to the problem which gave rise to the invention in suit]?
[38] Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120; 90 IPR 457 at [152].
Where the invention involves a combination of integers, obviousness is to be determined by reference to the combination as a whole and not each integer individually:[39]
the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown by [the Respondent] to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.
[39] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [41]; See also Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253.
Problem to be solved and Common General Knowledge
In order to determine whether an invention would be obvious in light of common general knowledge, a useful test that should be applied is the Cripps question which can be simplified to:[40]
Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?
[40] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187]-[188]; The question was endorsed in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 as a ‘reformulation of the Cripps question’.
Moreover, it is not sufficient to establish common general knowledge solely by reference to a publication. Rather, it must be shown that the information contained in the publication formed part of the common general knowledge. This principle is set out in Ranbaxy Laboratories Limited v AstraZeneca AB where Middleton J stated:[41]
As I noted in Eli Lilly [2013] FCA 214, information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art: see Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002 at 514 [96], citing British Acoustic Films (1936) 53 RPC 221 at 250 (which was also affirmed in General Tire (1971) 1A IPR 121 at 135). Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.
In Alphapharm (2008) 76 IPR 618; [2008] FCA 559, Lindgren J observed that (at 667 [221]):
[I]t was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is “‘generally accepted without question”‘ or “‘generally regarded as a good basis for further action”‘ by the bulk of those in the art.
[41] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 at [217]-[218].
This concept was reiterated in Meat & Livestock Australia Limited v Cargill, Inc, where Beach J stated:[42]
There is also a further point to be made concerning common general knowledge. There is no general principle permitting admissions in the specification of a patent to be used to establish in and of themselves that information is common general knowledge. Whether information has become so widely assimilated that it forms part of common general knowledge must be determined on the evidence, although admissions can be considered as part of that evidence.
[42] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [688].
In summary, the Opponent’s view of what constituted common general knowledge at the priority date, is set out as follow:[43]
[43] Opponent Submissions, Annexure B.
1.Portable transaction payment devices such as credit cards and debit cards.
2.The type, nature, format and significance of the data stored on such portable transaction payment devices.
3.The forms and characteristics of the memory provided on such portable transaction payment devices.
4.The operation of POS terminals and automated teller machines.
5.Communication and protocols employed therein in the transfer of data to and from POS terminals and the computer systems of financial institutions of consumers (such computer systems maintain or reflecting consumer accounts).
6.Communication and protocols employed therein in the transfer of data to and from merchants and financial institutions of merchants, including electronic card-based merchant transaction delivery systems for delivering-based transaction data from merchants to banks as part of a transaction authorisation process.
7.Communication and protocols employed therein in the transfer of data to and from POS terminals and the computer systems of card issuer (such as credit card issuers).
8.Wireless and contactless data communication systems and protocols, such as Bluetooth, Wi-Fi, infrared, RFID (ie. radio frequency identification) and NFC (ie. near field communication).
9.The interaction of POS terminals with back acquirer systems, including in cross-border transactions.
10.Transaction standards for payment cards, including the EMV standard (ie. that of EMV Co, a consortium originally established by Europay, Mastercard and Visa) and the standards established amongst the members of the various card associations, pertaining to such transactions.
11.The application of interchange fees in transactions, including their application on an inter-reginal, intra-regional and domestic basis.
12.The steps followed in the authorisation of a card payment transaction at merchant POS for different types of card (eg. credit, debit and charge cards).
13.Contactless communications between a Contactless Consumer Portable Transaction Payment Device (CCPTPD) and a terminal, including Visa PayWave (introduced in 2007) and Mastercard PayPass.
14.Dynamic Currency Conversion (DCC), which allows a transaction where two currencies are involves (eg. the currency of the merchant and the currency associated with the credit card) to be conducted in the currency of the credit card, by detecting the card currency and applying a currency conversion at the time of the transaction.
15.The inclusion of markups, margins and other fees in the conversion rate used in DCC.
16.That portable consumer transaction devices had encoded therein data that included an Application Currency Code (ACC).
(citations omitted)
Much of what the opponent has submitted is consistent with the information described within the background section of the opposed application. Mr Coffill also states that he is ‘generally in agreement with the content of the Background’,[44] and has provided the following explanation which is useful to better understand the opponent’s summary of common general knowledge:[45]
EMVCo published the original standard for [integrated circuit (IC)] card and device interoperability in 1995. The standard was revised several times until 2000, but has since been comparatively stable with more recent updates coming at intervals of about three years. The wide adoption of the EMV standards suite helps to ensure a successful processing outcome for IC cardholders wherever they transact around the world.
In most instances, the [application currency code (ACC)] on an IC card (such as a credit card or debit card) will match the cardholder billing currency. That is, the currency of the account to which the IC card is associated will in all likelihood match the currency associated with the ACC. ACC thereby provides a mechanism for quick determination of the currency associated with an [integrated circuit] card without having to compare, for example, the [bank identification number (BIN)] of the IC card with a table of BIN entries with related information (which will include the currency).
The bank identification number…corresponds to the first six number of a card’s primary account number. These can be used to identify the issuer of the card and, further, are typically unique to the particular product offered by the issuer. Therefore, the BIN typically is associated with a particular product issued in a particular country and, thus, the currency associated with the IC card can be determined from the BIN.
[44] First declaration, [8].
[45] Ibid [10]-[12].
Mr Coffill explains that although ACC was part of the EMV, this is not the case in the context of contactless system. However, he considers that the process of transferring essential payment using either a contact or contactless process is the same, and it would not be technically challenging to switch from a contact to a contactless process before the priority date.[46] In any event, it appears that the reason the focus was on contact communication processes, rather than contactless, was to maintain compliance with card association requirements as opposed to there being a technical barrier.[47] One example of contactless communication is the use of RFID communication for smart cards, such as the London Oyster card.[48]
[46] Ibid [13].
[47] Ibid [40].
[48] Ibid [41].
In relation to how transactions are conducted, Mr Coffill submits that ‘it was the practice of providers of foreign exchange conversion rates before the Earliest Priority Date to include additional charges in the conversion factor that was provided, for example mark-ups, margins and other fees.’[49] He then goes on to explain that this is how DCC transactions were processed at Pulse International as early as 2004. I note from May 2004 to June 2006, Mr Coffill was employed as a ‘Divisional Manager – POS’ at Pulse International.[50] During this time, Pulse International was a joint venture partner with Travelex (Australasia) (Travelex), and was the processing organisation for DCC transactions conducted as part of Travelex’s business. ‘Travelex regularly provided [Pulse International] one conversion factor per relevant currency applied to DCC transactions. These factors included the underlying exchange rate and mark-ups and margins.’[51] Mr Coffill recalls that:[52]
[d]uring the period 2004-2006, I recall that each business day Pulse received a communication from Travelex specifying the conversion factor that should be applied to all DCC transactions for specific currencies. The communication specified the conversion factors to be used in DCC processing until the next communication. There were no additional charges applied in the transaction process as a separate process – it was the application of the single conversion factor specified for the purpose of converting the transaction values to the “second currency”.
[49] Coffill, [19].
[50] Exhibit GRC-1.
[51] Coffill, [21].
[52] Ibid [22].

However in 2012, while Mr Coffill was employed by Travelex Outsourcing,[53] he states that:[54]
…we received a directive from Visa to the effect that the acquiring processor had to delineate in any DCC transaction record separate amounts for the currency exchange rate applied and any additional charges applied for the conversion so that that [sic] all component amounts were visible to the consumer. This is consistent with my belief that incorporating the conversion charges in the conversion factor was a practice that was in use and known prior to the Earliest Priority Date.
[53] Exhibit GRC-1.
[54] Coffill, [24].
Consequently, it is clear in my view, that all of the integers summarised as points 1 to 16 by the opponent constitutes common general knowledge at the priority date. Moreover, noting that the integers interact with each other generally, in a known and predicable way, it follows that a person skilled in the art would be directly led to combine these integers together.
Obviousness in light of common general knowledge alone
The Opponent’s position on this point is that the opposed application did not contain a scintilla of invention at the priority date, and Mr Coffill’s evidence is unchallenged.[55] Briefly I must note where the evidence available in an opposition is unchallenged, it does not follow that an alleged invention would lack an inventive step in light of common general knowledge alone. This determination can only be made based on the merits of the evidence itself.
[55] Opponent Submission, [74].
In any event, as outlined above, I am satisfied that the opponent’s submission of what is common general knowledge, Mr Coffill’s explanation of the state of the art, and the disclosure provided in the background section of the application suggests that the use of CCPTPD to conduct electronic transactions, in a domestic or international currency, is well known. Moreover, the decision to add a mark-up, commission or any additional fee to a currency conversation is a business decision that is commonly and typically expected to be performed. I am also satisfied, that whether a transaction is conducted via contact or contactless means, in a general manner, requires a minimal level of inventive ingenuity. Importantly, the use of DCC, to allow a user to select whether to conduct a transaction in a domestic or international currency, is well known.
On the question of whether a person skilled in the art would be directly led to the precise combination of features claimed, logically the answer is yes. At the very least, the manner in which the individual integers are selected would be dependent upon the standard which a company may wish to maintain compliance with. It would be counterintuitive for a company to implement a system in a manner, which is incompatible with the standards required by, for example, payment acceptance devices and payment transaction networks in general. Moreover, from the general explanation of DCC provided, it is clear that transactions conducted in an international currency would be subjected to an international conversation rate, and an additional mark-up, commission and additional fee. To do otherwise would also appear counterintuitive to reasonable business sense.
In this respect, I find that claims 1 – 2, 4 – 6, 8 – 10 and 12 lack an inventive step in light of common general knowledge alone.
In relation to claims 3, 7 and 11, I accept that conducting transactions using a contactless means is known. I also accept that in one embodiment, this may involve the use of RFID technology. Although Mr Coffill does state in his declaration that the communication means claimed are ‘a listing of commonly utilised wireless communication apparatus that were well known as at the Earliest Priority Date’,[56] nothing further is said. In any event, the fact that the use of RFID technology is a known communication apparatus, and would be suitable for CCPTPD, means that it is used and implemented would be in the manner it was designed and intended to be used.[57] It is also described within the application, that NFC as an open standard communication systems that was designed by Philips and Sony Corporation, to be used in conjunction with RFID based technology.[58] In this regard, I can state with some confidence, that the evidence available is sufficient for me to conclude that claims 3, 7 and 11 also lack an inventive step in light of common general knowledge alone.
[56] Coffill, [30].
[57] See, eg. HRB Innovations, Inc. [2018] APO 63 where the use of a statistical tool, in the manner it was designed and intended to be used, was found not to improve a computer system.
[58] Specification, Page 4 Lines 4-7.
Consequently, I find that all of the claims lack an inventive step in light of common general knowledge.[59]
[59] Cf Koppers Performance Chemicals New Zealand v Zelam Limited [2018] APO 73 at [63]-[71]; Inter Aqua Advance A/S v Bent Urup Holding ApS [2018] APO 43 at [115]-[118]. See also Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22 at [113]-[142]; Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty. Limited [2018] APO 23 at [142]-[174].
Inventive Step in light of Pulse
As outlined above, claims 1 – 2, 4 – 6, 8 – 10 and 12 are not novel in light of Pulse. It therefore follows that these claims also lack an inventive step in light of Pulse. Regarding claims 3, 7 and 11, while Pulse does state that the information contained in a card may be obtained by passing said card near a card proximately reader, it is silent on any specific means upon which this could be done. In any event, my reasoning above that claims 3, 7 and 11 lacks an inventive step in light of common general knowledge alone would equally apply to when the common general knowledge is considered together with Pulse.
Conclusion
The Opposition is successful. All of the grounds pressed by the Opponent have been made out.
Typically, the usual direction which follows is that I would provide the Applicant a period of two months from the date of the decision to propose suitable amendments to overcome my findings.
In the present case, the Applicant has filed and requested full standard examination on divisional applications AU 2017206203, AU 2018200622 and AU 2018200623. Moreover, the Applicant has avoided a previous opposition by withdrawing AU 2009279757, and has also sought, unsuccessfully, to withdraw the present application. Noting these circumstances, there are no reasonable prospects of the Applicant filing amendments and it seems appropriate for me to refuse the present application in the public interest to avoid any uncertainty.
Consequently, I refuse the application.
Costs
It is usual in matters before the Commissioner that costs should follow the event. Where an opposition is conducted between two parties, costs would typically be awarded according to Schedule 8 against the unsuccessful party. On occasions where a party had played no active role in a matter, it is possible that no award of costs is made,[60] or a variation of costs may be awarded.[61] The conduct both in and leading up to proceedings may be taken into account when considering an award of costs.[62]
[60] See, eg., Intervet International B.V. v E.I. du Pont de Nemours and Company [2017] APO 11 at [51]; SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 72 at [61].
[61] Gs Technology Pty Ltd v Davies Shephard Pty Ltd and Gsa Industries (Aust) Pty Ltd [2000] APO 49.
[62] Oshlack v Richmond River Council [1998] HCA 11; 193 CLR 72; Evans and Another v Maclean Shire Council and Another [2004] NSWLEC 89; 133 LGERA 270; Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company [2008] APO 20 at [105]; Meiji Dairies Corporation v Fonterra Co-operative Group Limited [2012] APO 129 at [22]-[23]; Nuseed Pty Ltd v Pacific Seeds Pty Ltd [2015] APO 79 at [49].
Noting that the present matter is technically the second time which the Opponent has had to devote resources to bring about an opposition, and generally of the Applicant’s conduct,[63] I am of the view that it is appropriate for an award of costs to be made.
[63] SNF (Australia) Pty Ltd v Ciba Specialty Chemical Water Treatments Limited [2016] APO 22. See also Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27 where it was determined that the Commissioner has the power to award costs where proceedings under the Act are discontinued prior to a substantive hearing.
I award costs, against the Applicant, Visa U.S.A. Inc., according to Schedule 8.
Isaac Tan
Delegate of the Commissioner of Patents