InfoTrack Pty Limited v Encompass Corporation Pty Ltd
[2019] APO 48
•31 October 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
InfoTrack Pty Limited v Encompass Corporation Pty Ltd [2019] APO 48
Patent Application: 2013201921
Title:Information displaying method and apparatus
Applicant: Encompass Corporation Pty Ltd
Opponent: InfoTrack Pty Limited
Delegate: Dr N. R. Madsen
Decision Date: 31 October 2019
Hearing Date: 9 September 2019, in Canberra
Catchwords: PATENTS – a method and apparatus for displaying and searching information relating to one or more entities present in a network for providing business intelligence – section 59 – opposition to grant of a patent – grounds of novelty, inventive step, manner of manufacture – the claims are not for a manner of manufacture – claims are novel – claims lack an inventive step – no patentable subject matter – application refused – submissions sought regarding award of costs
Representation: Solicitor for the applicant: Gilbert and Tobin
Counsel for the opponent: Sophie Goddard SC assisted by Ben Mee
Solicitor and Patent Attorney for the opponent: Shelston IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013201921
Title:Information displaying method and apparatus
Applicant: Encompass Corporation Pty Ltd
Date of Decision: 31 October 2019
DECISION
The opposition is successful. None of the claims are for a manner of manufacture. The claims are novel but not inventive.
I do not see any patentable subject matter within the specification that could overcome the finding of a lack of a manner of manufacture. Accordingly, I refuse the application.
I provide the parties with fourteen (14) days from the date of this decision to file any submissions as to an award of costs.
REASONS FOR DECISION
Background
This matter relates to patent application 2013201921 in the name of Encompass Corporation Pty Ltd (the applicant), having a filing date and earliest priority date of 25 March 2013. The patent was examined and advertised as accepted on 17 March 2016. Following this, a notice of opposition was filed on 17 June 2016 by InfoTrack Pty Limited (the opponent). The request for examination was filed on 25 March 2013 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent application. This means that the onus remains with the opponent to clearly establish its case in reaching a conclusion on any issue (Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283), and that the law that applies to the present grounds of opposition is that prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
The present application is a parent application to two innovation patents numbered 2014101164 and 2014101413. These innovation patents were certified in December of 2014 and February of 2015 respectively, and were the subject of a joint Federal Court proceeding in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 subsequently invalidating these patents on the ground of manner of manufacture. That decision was appealed by Encompass Corporation Pty Ltd and was heard by a full bench of the Federal Court. A decision issued on 13 September 2019 in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 upholding invalidity on grounds of manner of manufacture across all claims, and lack of innovative step across the majority of claims. The Full Court decision also substantially upheld the claim construction applied by his Honour Perram J in the first instance decision.
After the filing of evidence in support the applicant filed amendments to the claims and specification which were subsequently opposed by the opponent. The parties were heard by way of written submissions and a delegate decided that the amendments were allowable in the decision InfoTrack Pty Limited v Encompass Corporation Pty Ltd [2018] APO 16.
At the hearing, grounds of manner of manufacture, novelty and inventive step were pressed. Prior to the hearing, the parties requested a stay of proceedings pending a decision in the appeal to the Federal Court matter. A delegate of the Commissioner of Patents refused this request and the hearing proceeded in Canberra on 9 September 2019 with the opponent’s representation in attendance. The opponent filed their written summary of submissions on 27 August 2019 while the applicant filed a very brief written summary of submissions on 3 September 2019.
Following the hearing and the issuance of the Full Court decision, I invited the parties on 17 September 2019 to indicate (within 28 days) how they would like the matter to proceed. The parties responded indicating that no further submissions were required and that a decision could issue based on the information already filed.
The evidence
Evidence in this matter includes the following declarations and exhibits filed during the usual rounds of evidence in support, answer and reply:
Evidence in Support
·Daniel Logeman, a.k.a. Josh On dated 29 November 2016 (Logeman) with exhibits JO-A and JO-B
·Masahiro Takatsuka dated 24 November 2016 (Takatsuka 1) with exhibits MT-A and MT-B
Evidence in Answer
·Vanessa Farago-Diener dated 29 March 2018 (VFD) with exhibits VFD-1 to VFD-4
Evidence in Reply
·Masahiro Takatsuka dated 21 August 2018 (Takatsuka 2) with exhibits MT-C and MT-D
Most of the exhibits identified above are documents filed in respect of the Federal Court (FCA) proceeding in the form of affidavits from various experts, Federal Court Guidelines for Expert Witnesses, a joint expert report, and copies of a transcripts of that proceeding. I note MT-D is a copy of a patent provided to Mr Takatsuka which has already been refused for consideration as evidence in the present matter by a delegate of the Commissioner.
The Person Skilled in the Art
The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In Root Quality v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
To me a skilled addressee in the present case will have a practical interest in the formulation of software-based searching solutions in the field of relational network information. As identified by Perram J in the FCA (Federal Court of Australia) Judgement the field of the invention is the field of information retrieval and data management including data visualisation. I see no reason why the experts providing evidence before me would be unsuitable to comment regarding the nature of the claimed invention and the state of the art.
Specification
10. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The invention described in the specification relates to the field of information retrieval and data management and visualisation and is essentially couched in the same terms as innovation patents 2014101164 and 2014101413. His honour in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 provides a summary of the field of the invention and associated issues in this field at [8]-[10] as follows:
“8 The Patents identify a problem existing in [the field of information retrieval and data management and visualisation]. This is the problem of data about entities existing in many disparate databases. For example, a person may be recorded as the owner of land in a database maintained by the Land Titles Office, as a director of one or more companies in the register of companies maintained by the Australian Securities and Investments Commission (‘ASIC’) and as a registered driver at a motor vehicle registry. There can be difficulties in accessing all of this information about a person in a seamless way. Some of the information is not public and some needs to be purchased.
9 The difficulties in searching for information about a person in multiple disparate databases are not new. The Patents reveal at [4] that there exist in the prior art what they term federated search mechanisms. By this it is meant mechanisms which can search across multiple databases and aggregate the results. The Patents identify difficulties within these mechanisms, however. One problem is that they are not particularly user-friendly and have limited ability to store data in different formats. Another difficulty is that these mechanisms are said not to have been able to ‘evaluate business networks’. It became clear during the trial that what this meant was there was no simple way to see as a result of multiple searches what connections might exist between various entities. For example, a search of a lot of land might reveal two individual owners who might also be shown by an ASIC search to be directors of several companies one of which owned the lot immediately next door. The description of the Patents as being methods of displaying information relating to one or more entities by means of a network representation is a little abstract. At [36] of the 164 Patent (and [40] of the 413 Patent) a schematic diagram of one such network representation was
given as Figure 6:
10Another difficultly identified at [6] and [7] of the 164 Patent, of some importance in this litigation, is the fact that different databases frequently store the objects within them in different formats. One may store names with full Christian names, another with initials. In some a postcode may be stored in a separate field to a street address; in others it may be part of the same field. A related difficulty is that spelling errors inevitably intrude into databases. Together, these problems can make it difficult to be sure that one is talking about the same person when conducting a search.”
Figures 5B and 5C provide a useful depiction of the functioning of the claimed invention as a process for presenting information and performing searches.
The claims
14. The specification as accepted and subsequently amended during the opposition proceedings ends in 19 claims with claims 1 and 19 being independent (see Annex for the full claim set). Claim 1 is a method claim while claim 19 is an equivalent claim to an apparatus. Claim 1 is reproduced below with underlines and strikethroughs showing features that distinguish the claimed invention from the claimed invention of the Federal Court decision, particularly patent 2014101164.
A method of displaying information relating to one or more entities, the method including, in an electronic processing device:
a) generating a network representation by querying remote data sources, the representation including:
i) a number of nodes, each node being indicative of a corresponding entity; and,
ii) a number of connections between nodes, the connections being indicative of relationships between the entities; and,
b) causing the network representation to be displayed to a user;
c) in response to user input commands, determining at least one user selected node corresponding to a user selected entity by determining selection of a node in the network representation using a user input device;
d) determining at least one search to be performed in respective of the corresponding entity associated with the at least one user selected node by:
i) determining an entity type of the at least one user selected entity;
ii) determining a number of available searches relating to the entity type of the at least one user selected entity;
iii) displaying a list of the number of available searchesin accordance with the entity typeon the network representation; and,
iv) determining selection of at least one of the available searchesin accordance with user input commandsby determining selection of one of the list of the number of available searches using a user input device
e) performing the at least one search to thereby determine additional information regarding the entity
from at least one of a number of remote data sources by generating a search query, the search query being applied to one of the number of remote databases to thereby determine additional information regarding the entity; and,
f) causing any additional information to be presented to the user.
15. The claimed invention works within an electronic processing device such as a computer. This device generates and displays a representation of a network by making queries to remote data sources. The network representation is a normal data representation of connections between nodes wherein nodes represent entities and connections represent relationships. A user then uses an input device such as a mouse or keyboard to select a node within the network representation. After selection of the entity, the electronic processing device then determines at least one search that is to be performed with respect to that selected entity. The device does this by: determining the entity type; working out how many searches are available for the entity having the particular type; displaying a list of available searches on the network representation; and then determining selection of a search using a user input device. The electronic processing device then performs the search to gather additional information regarding the entity before displaying additional information to the user. This data visualisation and gathering processes is well depicted in figures 5B and 5C above.
16. The first instance FCA judgement identified proper construction of several key terms in the independent claims and specification of the related applications. These terms also appear in the present specification and the claims and include: “data bases” and “data sources”; “an electronic processing device”; “remote” data sources; “entity matching”; and, “search” and “query”. Perram J made the following rulings with respect to the construction of these terms from which I see no reason to depart, and from which the Full Court saw no reason to depart.
·“Data sources” and “Databases”—at [26] of the FCA Judgment, Perram J stated:
“Although as a matter of ordinary language there is a difference between a
database and data source (the former is one example of the latter but not vice
versa) that difference is of no moment to these Patents. They are used, if not
interchangeably, then with little or no regard for any formal difference. I will
use ‘data source’ for the balance of these reasons. This was also the view of
Professor Takatsuka.”
·“Electronic Processing Device” and “Remote Data Sources”—at [47]-[48] of the FCA Judgment, Perram J stated:
“…I do not agree with Professor Grundy’s interpretation of what the Patent
requires. He is correct that various parts of the specifications of both Patents
assume that there is a distinction available to be drawn between remote and
local data sources. However, all that shows is that the invention covers both
situations.
I conclude that where claim 1 refers to a ‘remote data source’ it is not necessary
that that source forms part of a different logical system; nor, correlatively, that
it need be under the control of a different organisation.”
·“Entity matching” (entity identification)—at paras [66]-[69] of the FCA Judgment,
Perram J stated:
“I accept in practical terms that any embodiment of the method will need to
address the issue of entity matching. If an embodiment of the method does not
check to see that the entity retrieved has the same name, then the method simply
will not work. I do not accept, however, that this practical matter carries with it
any necessity to perform disambiguation (as explained above).
But to say that the method will not work without such a step being taken is not
to say that such a step has been claimed. For example, a patent for a windscreen
wiper might assume the presence of a windscreen and the wiper might be wholly functionless without it, but this would not mean that the windscreen was part of
the claims.
The short fact is that claim 1(e) does not refer to entity matching or disambiguation. Accepting it assumes the former, it does not as a matter of
language claim it. I accept that there are many references to ideas which
correspond with entity matching and disambiguation in the specification.
However, those do not permit me to expand the meaning of claim 1(e) to include
within its terms something which, to my mind, is not there.
Accordingly, I do not accept that claim 1(e) requires entity matching or
disambiguation.”
·“Search” vs. “Query”—at para [72] of the FCA Judgment, Perram J stated
“The experts were as one in thinking that to a person skilled in the art, these
meant subtly different things. However, they also all agreed that the Opposed
Application failed to observe the difference and used them interchangeably. As such there is nothing to resolve about this.”
17. A further point of construction is in respect of claim 13 which is reflected in claim 4 discussed in the Federal Court decisions. Claim 13 of the present application is defined as follows via dependency upon at least claim 11:
11) A method according to any one of the claims 1 to 10, wherein the method includes: a) determining search results data indicative of additional information; and, b) analyzing the search results data to identify at least one entity.
13) A method according to claim 11 …, wherein the method includes identifying at least one entity by at least one of:
a) determining entity details from the search results data, the entity details including at least one of:
i) an entity name; ii) an entity address; and, iii) date of birth;
b) comparing the entity details to existing entity details for existing identified entities; and,
c) determining if the entity is one of the existing entities based on the results of the comparison.
18. In regard to this claim and the use of the phrase “at least one of” in its preamble, it was accepted that the claim could be read disjunctively to the exclusion of steps b) and c). In this regard it is clear the claim requires no disambiguation of entities (e.g. distinguishing one John Smith from another John Smith) and instead it can be construed as including “entity matching” to the degree that one determines “apparently” identical entities. This is the construction that the Full Court appears to have suggested broadly construing the concept of entity matching (see [140]). I see no reason to depart from this construction.
One or plural remote data sources?
19. A further key point of construction is in respect to the feature 1a) being generating a network representation by querying remote data sources. The question that lies herein is whether the presence of the plural denotation of sources necessarily limits the claim to more than one remote data source being queried for the purpose of generating an initial network representation. Of relevance to this question is the Hearing Officer’s decision in InfoTrack Pty Limited v Encompass Corporation Pty Ltd [2018] APO 16 where the delegate was considering allowability of amendments to the claim to include the above-mentioned feature. There the feature was construed at [6] and [24] as limited to multiple sources to the exclusion of a single data source. As identified by the opponent, the delegate took this position while making clear that the position had been reached without evidence being provided before those proceedings.
20. The expert evidence that was led and relied upon in the FCA proceeding, which also serves as evidence in the present matter, promotes the proposition that “querying remote data sources” means “one or more” remote data sources. Submitted as evidence in answer, an Affidavit from Professor John Grundy construes the claim as such (see [106]). Professor Grundy understands the term to mean (in the context of the innovations patents before the FCA) that:
“…the electronic processing device is configured to have the capability of searching multiple remote data sources that the performance of a search query in accordance with the claimed method involves querying one or more of those remote data sources. I further understand from the claim that the method incorporates a process by which such a search query is performed and a network representation is generated from the data retrieved from the remote data source or sources.”
21. Professor Grundy also identifies that the step of generating the network representation can be performed by querying a single logical system. In declaratory evidence for the opponent, Mr Takatsuka makes similar remarks at [46] of his first declaration, and presents further detail in his second Affidavit filed for the FCA proceedings at [31] when discussing the specifications. He suggests that they provide a clear indication that it would be sufficient for a system to have a single data source, and that the claim “includes systems with one or more than one data source”.
22. I must be cautious in interpreting the expert’s comments. In the specification it is abundantly clear that a single data source may be the basis for the query and generation of the initial network representation. The same may be said of the subsequent query present in the claims. At the same time the claimed feature reads as generating a network representation by querying remote data sources (my emphasis). As was found by the delegate in InfoTrack Pty Limited v Encompass Corporation Pty Ltd [2018] APO 16, there is a clear and plain meaning that the means for generating the network representation is the querying of sources in the plural. I see no other words in the claim to disrupt this plain reading of the feature. While the evidence and submissions argue for the presence of a singular source of remote data, I can see this as importing a degree of gloss on the part of the experts with reference to the feature 1e) that is present in the Federal Court proceedings. Well traversed in patent law is the fact that it is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification (Decor Corp v Dart Industries 13 IPR 385).
23. It is the case that a single data source may be compiled itself by querying a plurality of remote data sources. This seems a rather ubiquitous way of gathering data to create a useful repository. To this extent, the claim appears suitable to be read to include the “singular” electronic device performing the claimed method by both generating the network representation, and at some point in time querying a plurality of remote data sources as part of the means for generating the representation. The claim does not necessarily require the active step immediately prior to generating the network representation to be the querying of more than one data source. One data source could be queried at the point before generating a network representation, as long as that single data source was created by the same electronic device querying a plurality of remote data sources at some earlier point in time. In other words, the querying of plural data sources is a route by which the electronic processing device must pass in order to facilitate generation of a network representation.
24. Nonetheless, I construe the term “generating a network representation by querying remote data sources” to be limited to multiple sources being queried by the electronic processing device, at the exclusion of a single data source only.
The Common General Knowledge
25. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited(1980) 144 CLR 253 at page 292, Aickin J. stated:
"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."
26. The evidence in support filed by the opponent includes, as exhibit MT-A, a first affidavit of Mr Masahiro Takatsuka prepared for the FCA proceedings regarding the innovation patents. Mr Takatsuka’s affidavit provides a detailed account of what he considers to form part of the common general knowledge of the person skilled in the art of information retrieval and data management including data visualisation. In forming this account, Mr Takatsuka was provided with a list of propositions and asked to indicate whether he agreed or disagreed that each was common general knowledge (MT-A at [261]). Responsive to this, Professor John Grundy filed an affidavit commenting on each of the assertions made by Mr Takatsuka (VFD-1 at [300]-[316]). To the extent that there is disagreement and I consider certain points asserted by Mr Takatsuka as common general knowledge as not being so, the opponent has not discharged their onus of establishing a particular fact.
27. As such, relevant established common general knowledge includes the following:
1. Information about entities could be displayed using network representations using nodes representing entities, and connections between nodes indicating relationships between entities.
2. It was commonplace for a user viewing a network representation to want to obtain additional information regarding entities in the representation.
3. Additional information regarding an entity in the representation could be represented by adding or modifying the representation.
4. There were a number of electronic data collections containing information about entities, such as companies, individuals, or the like.
5. Information about entities could be obtained from remote data sources for free or via a payment.
6. Identifying an entity in search results data could be performed by determining an entity name, entity address or date of birth, comparing to known details for known entities, and determining if an entity in search results data was one of the known entities based on the comparison.
7. Identification issues include: misspellings and inaccurate recording of data; inconsistency in the way information such as names, addresses and dates of birth addresses were used, stored or recorded; and the existence of duplicate records within a data collection.
8. Mechanisms such as pattern matching, address matching and modifying entity data were used to assist in overcoming identification issues.
9. Electronic devices were used to:
a. Cause information to be displayed about entities
b. Generate network representations
c. Display network representations to users
d. Perform searches for additional information regarding entities represented in a network representation
e. Perform the above searches by querying remote data sources
f. Modify network representations in order to present additional information about an entity represented in the network representation
g. Implement rules for identifying entities
10. Network representations displayed using electronic processing devices could be and were responsive to user interaction.
11. Where network representations were responsive to user interaction, the actions available in respect of a node could be contextually sensitive to the type of entity to which the node corresponded.
12. An apparatus for displaying information could include an electronic processing device.
28. In the FCA proceeding, a joint expert report (VFD-2 at page 8) was filed in which the experts also made the following statement forming a 13th point of common general knowledge:
“All experts agree that at the priority date each technology component of the solution was common general knowledge.”
29. A key element of contended common general knowledge was whether information relating to one or more entities could, and was, obtained by querying remote data sources. This point appears particularly pertinent to the feature of claim 1 wherein a network representation is generated by querying remote data sources (being more than one data source). On this point, Mr Takatsuka states that the relevant proposition is common general knowledge and reflects “basic concepts of network visualisation”. Responding to what was presented as proposition (b), Professor Grundy states at [302] of VFD-1:
“I disagree that proposition (b) was common general knowledge at the Priority Date. If proposition (b) was limited to the capacity to search a single remote data source then it may have been common general knowledge at the Priority date. However, proposition (b) is directed to multiple remote data sources. In my opinion, at the Priority Date persons skilled in the art would have considered it desirable to be able to query remote data sources but doing so was complicated, context dependent, and not common general knowledge.”
30. I have difficulty in accepting the contention of Professor Grundy that proposition (b) is not common general knowledge. Professor Grundy discusses the fact that he sees difficultly in querying multiple data sources. Presumably Professor Grundy sees this difficulty to lie in the fact that one may find it challenging to arrange for the automatic and centrally controlled searching and cross comparison of information from multiple sources when querying for the purpose of generating an accurate network of entities. However, this complexity is not reflected in the proposition itself. The proposition merely poses that more than one remote data source could be used to obtain information about an entity. Professor Grundy agrees with a subsequent proposition that “there were a number of electronic data collections containing information about entities, such as companies, individuals, or the like”. I have no doubt that there are multiple remote data sources that one might query to obtain information about one or more entities, with Perram J providing apt discussion in his decision at [8] when referring to the problems identified in the specifications of the innovation patents:
“For example, a person may be recorded as the owner of land in a database maintained by the Land Titles Office, as a director of one or more companies in the register of companies maintained by the Australian Securities and Investments Commission (‘ASIC’) and as a registered driver at a motor vehicle registry. There can be difficulties in accessing all of this information about a person in a seamless way. Some of the information is not public and some needs to be purchased.”
31. As such, I accept proposition (b) noting that I consider that the common general knowledge also includes:
14. Information relating to one or more entities could be, and was, obtained by querying remote data sources.
Manner of Manufacture
32. His Honour, Perram J, provided his summary of the state of the law for manner of manufacture at [189]-[191] of his decision. I further note that it is clear that the assessment as to patentable subject matter in this context requires a consideration of the substance of the invention. To this point, in Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011, Beach J determined that non-invasive prenatal genetic testing based on maternal blood sampling was patent eligible subject matter, by first identifying what the substance of the invention is, in each relevant claim noting that:
“Myriad confirms that the starting point for the resolution of the ‘manner of manufacture’ issue is the identification of what in substance each relevant claim is for. And relevant to this inquiry is the definition of the invention, which in turn depends upon the construction of the relevant claims read in light of the specification as a whole and the relevant prior art.”
33. To further guide the determination of patentable subject matter in the context of computer implemented inventions, a range of principles have been developed. The principles of law that apply to the present matter are substantially uncontroversial, being well summarised in the decision of delegate Dr Barker in Aristocrat Technologies Australia Pty Limited [2016] APO 49. There the delegate, at [35], sets out relevant considerations for patentability of inventions involving computer implementation arising from the Full Federal Court decisions of Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; (2015) 328 ALR 458 (RPL Central); [2015] FCAFC 177; (2015) 115 IPR 461 and Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; (2014) 227 FCR 378 (Research Affiliates):
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
· there must be more than an abstract idea, mere scheme or mere intellectual information;
· is the contribution of the claimed invention technical in nature;
· does the invention solve a technical problem within the computer or outside the computer;
· does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
· does the application of the method produce a practical and useful result;
· can it be broadly described as an improvement in computer technology;
· does the method merely require generic computer implementation;
· is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
· is there ingenuity in the way in which the computer is utilised;
· does the invention involve steps that are foreign to the normal use of computers; and
· does the invention lie in the generation, presentation or arrangement of intellectual information.”
34. Their Honours in the Full Court decision confirmed the law in relation to patentability of computer implemented inventions noting that the appeal did not raise “any significant question of principle”. They further noted that the appeal did not provide “occasion for this Court to set out the metes and bounds of patentable computer implemented inventions” (see [77]). In brief, affirming the judgement of Perram J, their Honours made the following observations in deciding that the substance of the claimed invention was nothing more than an abstract idea:
“We observe that the description is largely agnostic as to how the method should be implemented.” [22]
“…the method is really an idea for a computer program, it being left (as we have said) to the user to carry out that idea in an electronic processing device.” [101]
“… the method, as claimed, is no different in principle to the methods claimed in Research Affiliates and RPL Central.” [101]
35. The present invention differs from that addressed in the Federal Court matters in a number of respects. Firstly, step c) is further limited to the performing of user selection of an entity by determining selection of a node in the network representation using a user input device. A similar user selection using a “user input device” is added to the feature at d)iv) whereby selection of a search is achieved. In short, these additions incorporate the act for example, of selection of something on the screen occurring using a mouse or a keyboard. A second significant addition to the claims is the step at d)ii) of determining a number of available searches relating to the entity type of the at least one user selected entity, and subsequently displaying this number of searches. Thirdly, features are removed from claim 1e) when compared to the Federal Court matters in that the present independent claims are not limited to the performing of a search to determine additional information by querying one of at least a plurality of databases.
36. On the face of these differences I see nothing that would modify the invention of the present claims in a manner which would recharacterize the substance of the invention with respect to the Federal Court matters. Features added in relation to the use of a user input device plainly represent nothing more than a generic manner of computer implementing an act of selection of an object on a computer screen. On this basis, to me this difference clearly results in no improvement in the computer as no ingenuity is required whatsoever for a person skilled in the art to program a computer to, for example, enable a mouse to select an object. The remaining new feature of the determination and display of a number of available searches relating to an entity type has no relation to computer function and instead forms an expansion of the “idea for a computer program” that their Honours refer to at [101] of their reasons.
37. Put quite succinctly by the applicant in their brief written submissions before the hearing:
“Encompass accepts that the subject matter of the invention claimed in the 921 Patent (sic) is in substance the same as the invention claimed in each of the 164 Patent and the 413 Patent.”
38. On this basis, and in combination with my assessment of the features added to the present claims, I consider it clear that the findings for manner of manufacture by their Honours in the Full Court decision are equally applicable to the present claims. This is so also for the dependent claims all of which I have further considered and arrive at the same conclusion noting that no submissions have been presented arguing patentable subject matter in any of the appended claims.
39. Accordingly, I find that the claimed invention is not for a manner of manufacture.
Novelty
40. For the purposes of subsection 7(1) of the Patents 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 prior art information.
41. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20];; 137 CLR 228 at [235]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
42. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19];; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case: “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”.
43. I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
44. Furthermore, an essential feature is one which materially affects the way in which the invention works. In Catnic Components v Hill & Smith Ltd(1982) RPC 183 at 243 it was stated:
“The question in each case is: whether persons with practical knowledge … would understand … a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention ... The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked.”
45. The opponent argues that the claims lack novelty in view of the following.
·“They Rule 2010”
·US 2004/0215648 A1 to Marshall et al.
·Marshall et al. and “They Rule 2010” or “They Rule 2004” when read together, OR
·US 2008/0270458 A1 to Gvelesiani
They Rule 2010
46. The opponent submits that They Rule 2010 anticipates each of claims 1-11, 13 and 16-19. They Rule 2010 is a web-based publication that was established as prior art in the FCA proceedings. They Rule was a program created by Mr Logeman (a.k.a. Josh On) which began as a data visualisation project that the author describes in his first affidavit filed in the Federal Court proceedings (exhibit JO-A) as “propaganda”. It was initially designed to show who controlled major companies and any interrelationships between this control across companies (exhibit JO-A at [28]). To obtain information for the visualisation tool, They Rule consults a third-party data source called “LittleSis”. The way They Rule works is depicted by looking at a screen shot of the program in operation.
47. The figure below shows the depiction of a network representation with nodes and connections showing relationships between nodes using the They Rule system. One can select an entity (eg Glenn H Hutchens) using for example, selection via a mouse and thereby be enabled to perform further searches/queries in relation to that person. In the figure one can “show boards” or do “research”. One of these queries can be selected by the user. Data for the generation of the network representation is obtained by querying the “LittleSis” database.
48. In dispute with respect to the disclosure of They Rule is:
· Generating a network representation by querying remote data sources
· Displaying a [number] of available searches [relating to] the entity type [of the at least one user selected entity]
· Whether They Rule discloses obtaining any information from the subsequent search. As per the Perram J’s findings at [81], the applicant identifies They Rule does not, “as claim 1(f) requires, cause the results of searches to be presented to the user. It is Google or the relevant third-party site which does that”.
49. On the first point the opponent submits that:
a) “It is irrelevant that LittleSis is the only remote data source that is supported for the generation of a network representation. As submitted in paras 75-83 above, the method includes a “drill-down” within the one data source and thus it is immaterial whether the “system” is capable of generating a network representation from more than one source. Professor Grundy’s comments in Appendix B pp7-8 accept this.”
b) “In any event, notwithstanding its primary contention that capacity to search multiple remote data sources is not required by the claims of the Opposed Application, They Rule 2010 is capable of querying more than one remote data source and generating a network representation, e.g. by querying a remote data source (LittleSis) and then querying (or “searching”) another remote data source (eg Wikipedia) and causing additional information to be displayed by Wikipedia. The network representation is only modified as a result of the LittleSis query but the claim does not require that, if more than one data source is able to be accessed, each leads to a modification of the representation.”
50. Regarding this feature I refer to my construction earlier in the decision. There I considered the term “generating a network representation by querying remote data sources” to be limited to multiple sources being queried at the exclusion of a single data source only. This is further limited by the fact that as per the wording of claim 1, a singular electronic processing device generates this network representation by (at some point) querying this plurality of data sources. The “LittleSis” is clearly a single remote data source. In generating a network query, the electronic processing device only queries this data source. The electronic processing device does not consult any further data bases as a means for generating the representation. The difference is not “immaterial”. It is an essential feature that materially affects the way in which the claimed invention works in the context of data gathering by the electronic processing device.
51. Furthermore, while They Rule 2010 may involve also querying Wikipedia, it only does so to the extent that one may search Wikipedia to find “more information” that is not contained in the generated network representation. The claimed invention involves the querying of remote data sources as a step by which the network representation is generated. In this sense, the network representation is facilitated by an earlier act of querying at least two data sources. Opening a separate tab in a web browser to search Wikipedia does not provide teaching of the relevant feature.
52. Regarding the second point, the opponent submits that:
“Professor Grundy accepted in the concurrent session that the “Show Boards” and “Show Directors” options in They Rule were displayed in accordance with entity type: T324.12-45 (VFD Affidavit page 302). As submitted above, the “query” generated by clicking Show Boards or Show Directors is a search within the meaning of claim 1(d). The Opposed Application does not distinguish between the terms.”
53. I agree with the opponent that there is necessarily an inherent determination of a number of available searches relating to an entity type once selected. The figure above shows that one might chose to “Show boards” or might also perform “Research”. These options are displayed as a list from which a selection can be made by mouse. Given the broad construction applied to the term “search” as being synonymous with a “query” I am satisfied that the relevant features are disclosed in They Rule 2010.
54. Finally, the applicant also contended that They Rule does not cause the results of searches to be presented to the user and notes that instead it is Google or the relevant third-party site which does that. Importantly I note that this submission is made in the context of feature 1e) present in the FCA proceedings which involved the query being applied to one of a number of remote databases to determine additional information. In this sense, They Rule does not have the capacity to search more than one data source. The claimed invention in the present matter is simply directed to the performance of at least one search with no limitation applied to the number or even location of the data sources. Searching/querying ‘LittleSis” to get further information regarding the entity and to cause this information to be presented to the user is present in for example, the functionality of the “Show boards” option. The following figure is the result of the selection of the “Show boards” option for Glenn H Hutchins.
55. As a result, I find that the claims are rendered novel in view of They Rule 2010 by way of the independent claims failing to disclose that the electronic processing device generates a network representation by querying remote data sources.
Marshall
56. Marshall is a patent application describing in its abstract, a method and system for showing inter-relationships between corporate directors and boards. A user interface permits a user to select an entity which can be a director or corporation following which a database is accessed to identify interlinks. Figure 6 shows a network representation of linked company directors accompanied by a list/key of connections representing companies whereby the links between nodes are “colour/line/shading coded” according to the company, with the network being centred upon the originally selected entity. Similar is presented in figure 7 which shows the reverse with corporations as nodes and directors coded as links. In dispute in the present matter is the disclosure in Marshall of:
· a “remote data source” from which the first network representation is generated—as the single local data source queried is not “remote”;
· the capacity to query or search more than one remote data source;
· displaying and allowing users to select searches from a list based on selected entity
type—as no list of available searches is displayed;
· presenting additional information at least in part by modifying the network representation—as the additional information is not generated from remote data sources.
57. Regarding the first point the opponent submits that Marshall expressly states in relation the database that stores data for the purpose of generating the network representation “database 201 may be stored externally with respect to the computer on which the database server resides” (para [0037]). I agree, given the broad construction applied to the term “remote”, that such an arrangement constitutes a single remote data source. I consider the being of “remote” to equate to the data source residing on a separate computer. Importantly as was the case with They Rule 2010, there is no disclosure in the document of the electronic processing device of Marshall querying more than one data source. The network representation is generated by querying only one data source.
58. On the third point, the opponent submits that:
‘… [0071] of Marshall describes a single action available upon selecting an entity in Figure 6, being “generate a new graphic of interlinks and interlocks for the selected entity”. The Opposed Application does not require that the number of available searches be more than one. Figure 6 of Marshall discloses the available actions for a selected director including generating interlinks and interlocks with other directors (not companies), and the available actions for a selected company including generating interlinks and interlocks with other companies (not directors). Professor Takatsuka would have used contextual menus in implementing the Marshall system, as a matter of course.
59. To me this is clearly an argument more relevant to the ground of inventive step. The citation does not clearly and unmistakably disclose generating a list as claimed. What is disclosed in Figure 6 is the ability to select near an entity a [+] sign for the purpose of generating a new graphic with respect to that entity. This is possible for all entities except for the primary entity for which the graphic has been generated. In this regard, disclosed are the features of performing at least one search and causing additional information to be displayed.
60. In summary, Marshall fails to disclose both generating the network representation by querying more than one data source, and there is also no disclosure of the presentation of a list as claimed. Therefore the claims are novel in view of Marshall.
Marshall and They Rule
61. The opponent also argued that Marshall could be read together with They Rule 2010 (or alternatively They Rule 2004) to anticipate the claims. Firstly, They Rule 2004 does not disclose any further relevant information over They Rule 2010. Secondly, I have already found that They Rule 2010 fails to disclose the feature wherein the electronic processing device generates a network representation by querying remote data sources. As a result, even if the documents could be read together, there would be no disclosure. While his Honour Perram J assumed for the purposes of his decision that the documents may be read together, I express significant doubt as to this possibility. They Rule is referred to in Marshall at paragraph [0006] as a “tool that is currently available” having “limited functionality”. While Marshall discuss some issues with They Rule I fail to see how this might form a suggestion that the documents should be read together as one. While there may be a motivation to combine these documents for the purpose of inventive step, the features of They Rule are not incorporated by any reference. I consider the documents separate sources of information.
Gvelesiani
62. This document discloses the generation of graphical representations between entities including nodes and interconnections between the nodes. As has been the case throughout this decision, nodes represent entities and interconnections represent relationships between those entities. A Business Knowledge Mapping System (BKMS) is queried by a user to create this network representation (abstract). The operation of the invention may occur by way of a web browser wherein a query is entered with data being returned from the BKMS (see figure 3A). Entities or relationships may be selected with a mouse to perform a query to obtain further information about the entities or relationships (paras [0024], [0034]). The opponent identifies the points of contention that are relevant to the independent claims as follows:
· a “remote data source” from which the first network representation is generated—
as the local BKMS source queried is not “remote”;
· capacity to:
o query more than one “remote data source during the first ‘query’”—as only the
local BKMS is queried;
o query more than one “remote data source during the second ‘search’”—as only the local BKMS is queried;
o present additional information at least in part by modifying the network
representation—as the additional information is not generated from remote
data sources. This is on the basis that the BKMS is the only remote data source that can be used to modify the network representation;
· displaying and allowing users to select searches from a list based on selected entity
type—as no list of available searches is displayed.
63. On the first point the opponent submits that the BKMS can be external, a separate logical system, and therefore remote (see para [0055]). I agree that this paragraph discloses the presence of the BKMS in a separate computer system to the user interface/client computing system. On the appropriately broad construction of the term “remote”, this feature is disclosed.
64. Regarding the claimed capacity to query more than one remote data source to generate a network representation the opponent submits that “the BKMS clearly retrieves data from more than one ‘remote’ data source via a network”. This is clearly the case, the BKMS functions by way of the architecture described in figure 4 over the page. A BKMS repository is housed within computer memory and is served by a Business Data Gathering Engine. This engine obtains (e.g. harvests, gathers, downloads, receives) data from various data sources via a network connection (para [0048]). In this regard, a network representation is clearly generated from data that has been gathered by querying remote data sources. However, the electronic processing device which obtains the data for the BKMS is housed in a separate electronic device which controls the user interaction process. The entire description of the invention in Gvelesiani points to client operations occurring in client-side computing systems that are connected via a network to the BKMS repository. On this basis, there is no querying of plural data sources occurring in the client computing systems that are depicted in Figure 4. The client computing systems only query one data source, that being the BKMS. On this basis the claims are novel.
65. On the feature of querying a remote data source during the second search, it is quite clear on reading of claim 1 that the at least one search is not specifically defined. On this basis, further queries for further information from the BKMS by the client system constitute the performing of at least one search to determine additional information about the entity and to cause this information to be displayed.
66. In relation to the feature of a potential list of searches to the user the opponent points to paragraph [0071] which, according to the opponent, “talks about a user selecting menu items to carry out filtering, searching or other operations. Professor Takatsuka expected the menu described would have been contextual, as a matter of course”. Paragraph [0071] states:
Specifically, in step 701, the routine determines a relationship map modification action. Such an action may be based on one or more user input events generated by a user operating a client application, such as a selection (e.g., mouse click, hover, etc.) of one or more elements of a displayed relationship map and/or specification of a filtering, searching, or other operation (e.g., by selecting a menu item, clicking on an action button etc.)”
67. Clearly disclosed is the selection of an entity using user commands of a user input device and the performing of further actions thereafter. While it may be the case that a menu item would be contextual to the item selected, I do not see any clear and unmistakable direction to the display, as a result of this selection, of a list of searches that will provide additional information related to that entity on the network representation as a result of that selection.
68. It follows that the claimed invention is novel in view of Gvelesiani.
Inventive Step
69. The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“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. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53];; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date 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 useful [desired result]?”
“A "mark-up data file" (or "markup data file", or "mark up data file") is a computer file that contains document text/content plus information (metadata) in addition to the text/content. The additional information annotates the text/content in some way, which the user may not see when reading the text. The annotations may include instructions as to the structure of the text/content, how the text/content is to be displayed or interpreted, changes which have been made, or instructions to perform particular functions. Prominent examples include the XML (eXtensible Markup Language) used for encoding and formatting in modern word-processing systems and the HTML (HyperText Markup Language) used to format documents on the World Wide Web.”
The use of definitions/instructions to appropriately identify information in XML or HTML files appears entirely routine. I consider claim 16 is obvious.
Claim 17 limits claim 1 to the receipt of the search results via a communications network. They Rule 2010 appears itself to communicate with LittleSis via the Internet. The feature is disclosed.
Claim 18 limits claim 1 to the performing of the at least one selected search by: determining search parameters required to perform the search; causing the search parameters to be displayed to the user; determining selected search parameters by user input; and generating the search query using the parameters to perform the search. Professor Takatsuka discusses disclosure of this feature by way of paragraph 88(n) of his first declaration.
“They Rule makes available different searches for selected entities, depending on the entity type (person or company) and the databases which are connected and for which there is known to be data (e.g., “website” is a search parameter available for some individual directors, but not others).”
I agree this amounts to the disclosure of the relevant features.
Therefore, I find that all of the claims lack an inventive step in view of They Rule 2010 and common general knowledge.
Marshall and Gvelesiani
As discussed above under novelty, both Marshall and Gvelesiani fail to disclose a list of searches that will provide additional information related to the selected entity type on the network representation as a result of the selection of that entity. As already discussed with regard to the common general knowledge, this feature has not been shown to be routine. Hence the claims are inventive in view of these documents.
Conclusion
The opposition is successful. While the claims are novel, I do not consider any of the claims inventive or for a manner of manufacture. I do not see any patentable subject matter within the specification upon which an amendment may be based. Accordingly, I refuse the application.
Costs
The applicant has been unsuccessful in defending their application. It appears that the present circumstances warrant an award of costs against the applicant. However I note that the applicant had requested an opportunity to comment in relation to costs prior to the decision to make an award. On this basis, I hereby provide the parties with fourteen (14) days from the date of this decision to file any submissions as to an award of costs
Dr N. R. Madsen
Delegate of the Commissioner of Patents
ANNEX
0
7
0