Pizzeys Patent and Trade Mark Attorneys Pty Ltd v Apple Inc
[2024] APO 54
•23 December 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pizzeys Patent and Trade Mark Attorneys Pty Ltd v Apple Inc. [2024] APO 54
Patent Application: 2017304128
Title:System for and method of authenticating a component of an
electronic device
Patent Applicant: Apple Inc.
Opponent: Pizzeys Patent and Trade Mark Attorneys Pty Ltd
Delegate: Dr V. Z. Kolev
Decision Date: 23 December 2024
Hearing Date: 30 October 2023 via video conference
Catchwords: PATENTS – section 59 – opposition to grant of a patent – clarity – novelty – inventive step – manner of manufacture – clear enough and complete enough disclosure – best method known to the applicant – support – authentication of a component of an electronic device to ascertain if the component has been replaced or tampered with – the component having a touch based input device – detecting touch event characteristics of touch events that identify a PIN – using the touch event characteristics as a source of random noise – using the random noise for generating dynamic unique keys – authenticating the component by the device – opposition unsuccessful – costs awarded
Representation: Patent attorney for the Applicant: Mr Carl Harrap and Dr Elyse Schinella of FPA Patent Attorneys Pty Ltd
The Opponent did not appear
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017304128
Title:System for and method of authenticating a component of an
electronic device
Patent Applicant: Apple Inc.
Date of Decision: 23 December 2024
DECISION
The opposition is unsuccessful on all grounds.
I have found that all claims are clear and supported by matter disclosed in the specification. I have also found that the invention, claimed in any one of the claims, is a manner of manufacture; is novel; and involves an inventive step.
In addition, I have found that the specification discloses the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and also discloses the best method known to the applicant of performing the invention.
Subject to appeal, I direct that the patent application proceeds to grant.
I award costs according to the amounts specified in Schedule 8 against Pizzeys Patent and Trade Mark Attorneys Pty Ltd.
REASONS FOR DECISION
Throughout this decision, unless explicitly stated otherwise, any reference to the Act, or to a specific section or subsection, refers to the Patents Act 1990, and any reference to the Regulations, or to a specific regulation or subregulation, refers to the Patents Regulations 1991. In addition, any reference to the Commissioner refers to the Commissioner of Patents as per the Act.
Background
The matter relates to patent application 2017304128 (the Application) in the name of Apple Inc. (the Applicant). The Application was filed on 21 July 2017 by the original applicant Mobeewave, Inc. under the Patent Cooperation Treaty as International application PCT/IB2017/054441, published as WO 2018/020383. The earliest claimed priority date is 25 July 2016.
The acceptance of the Application was advertised on 10 March 2022. A notice of opposition to grant was filed on 9 June 2022 by Pizzeys Patent and Trade Mark Attorneys Pty Ltd (the Opponent). Another notice of opposition was filed on 10 June 2022 by David Ian Lindsay; however, this opposition was later withdrawn on 9 September 2022.
The statement of grounds and particulars (the SGP) was filed on 9 September 2022, together with the documents mentioned in the SGP and referred to as D1-D24. Following the filing of the SGP, a delegate of the Commissioner issued a direction to the effect that documents D1-D24 are to be treated as evidence in support of the opposition.
On 6 October 2022, the Applicant filed a request to dismiss the opposition with respect to the grounds of novelty, inventive step, and best method. On 25 October 2022, a delegate of the Commissioner, while refusing the request to dismiss the specified grounds, issued the following directions:
“1. That the opponent supplies further and better particulars in relation to the grounds of novelty and inventive step. Specifically, the particulars should include, in relation to each of the documents relied upon, an indication of the relevance of the document to the grounds, a brief indication of what information is relied upon and reference to the relevant part(s).
2. The Opponent has fourteen (14) days from the date of this letter to comply within the direction.
3. If the Opponent does not comply with the direction, the ground of novelty and inventive step and/or the documents indicated will not be available for the Opponent to argue at the hearing as appropriate.” (original bold)
On 8 November 2022, the Opponent filed a request to amend the SGP to include further and better particulars. On 14 November 2022, the Opponent re-submitted the changed version of the SGP accompanied by a mark-up copy. The request to amend the SGP was allowed on 1 December 2022, thus resulting in what I will refer to as the Amended SGP (or the ASGP).
On 8 December 2022, the Opponent filed two additional documents, referred to as D25 and D26. The two documents were accompanied by a cover letter by Mr Lars Koch of the Opponent.
On 16 December 2022, a delegate of the Commissioner wrote to the parties informing them that the evidence in support was filed and that the evidence in answer was due. On 23 December 2022, the Applicant asserted that what was filed by the Opponent on 8 December 2022 was not evidence in support, because it was not in a declaratory form as required. On 11 January 2023, a delegate of the Commissioner informed the parties that the documents filed by the Opponent are still considered evidence in support despite not complying with the filing requirements. In addition, the delegate issued the following directions:
“1. That the Opponent is to file a copy of the cover letter by Lars Koch, filed as evidence in support on 8 December 2022, in an approved declaratory form.
2. In complying with direction 1, the declaration so created must, as far as is practicable, be identical in content to the letter. It is understood that the declaration may add text necessary for effecting the letter as a declaration, and that the declaration need not reproduce letterheads, contact details, addresses etc. that are found in letters but typically would not appear in a declaration.
3. The documents as filed with the evidence in support on 8 December 2022 are to be refiled together in a single electronic document separate to the declaration.
4. Pursuant to Reg 22.16A(2), the Opponent has two (2) months from the date of this letter to comply with the above directions, otherwise the evidence in support will be treated as not having been filed.” (original bold and italic)
On 8 March 2023, in compliance with the above directions, the Opponent re-filed the documents in the approved form. On 15 March 2023, the Applicant filed their evidence in answer. The Opponent did not file evidence in reply and, on 17 June 2023, informed the Commissioner that they will not be attending the hearing of the opposition. On 23 October 2023, the Applicant filed the “Applicant’s Outline of Submissions” (the Applicant’s Summary or AS).
Relevantly, the present opposition is with respect to the Application as accepted and is based on the Amended SGP.
Applicable law and onus
On 15 April 2013, important provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the RTB Act) commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed. For patent applications filed on or after the above commencement date, subsection 60(3A) applies:
“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.” (underlining added)
The Application was filed on 21 July 2017, hence subsection 60(3A) applies to the instant opposition. In addition, the filing date of the Application being after 15 April 2013 also means that the Application was examined under the amended provisions of the Act and Regulations following the RTB Act and the same are also applicable to the present opposition proceedings.
It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”.
Grounds of opposition and evidence
Grounds of opposition
The grounds of opposition as per the Amended SGP are as follows:
·lack of novelty;
·lack of inventive step;
·not a manner of manufacture; and
·failure to comply with ss 40(2) and 40(3), in that:
othe specification of the Application (the Specification) does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (s 40(2)(a));
othe Specification does not disclose the best method known to the Applicant of performing the invention (s 40(2)(aa));
othe claims are not clear (s 40(3)); and
othe claims are not supported by matter disclosed in the Specification (s 40(3)).
Evidence on file
The evidence filed in the opposition consists of the following documents:
·Evidence in support consisting of:
odocuments D1-D24 as filed together with the SGP, forming part of the evidence in support through the direction I mentioned earlier;
oa declaration by Mr Lars Koch dated 8 March 2023 (Koch) with exhibits marked as LOK-1 (representing document D25) and LOK-2 (representing document D26).
·Evidence in answer consisting of:
oa declaration by Professor Riaz Esmailzadeh dated 14 March 2023 (Esmailzadeh) with exhibits referred to as Annexure RE1 to Annexure RE3.
The Specification
The invention as described
The body of the Specification includes 46 pages of description and 6 pages of drawings depicting Fig. 1 to Fig. 6. The field of the invention is stated as follows:
“[02] The present technology relates to systems and methods for authenticating a component of an electronic device. The system and method may be used, for example, in the context of private information entry on the electronic device to ensure that only authenticated components are able to process sensitive information.” (underlining added)
Fig. 1, reproduced below (for compactness, I have reduced the original gap between the text “FIG. 1” and the drawing), “is a block diagram illustrating various exemplary components and features of an illustrative device 100 in accordance with one embodiment of the present technology” (at [87]).
The electronic device, “which may equally be referred to as ‘a device’ or ‘the device’” (at [88]), includes (at [88]-[91], in light of [78]):
·a mobile package on package (PoP) chipset 110, having:
oa low power double data rate (LP DDR) memory 112, having a secure random access memory (RAM) 113, and being stacked with:
oa system on chip (SoC) application processor 114, having:
§an isolated secured area (ISA) 115, having: a central processing unit (CPU) 116, a trusted user interface (TUI) 117, a secure read-only memory (ROM) 118, and a secure random access memory (RAM) 119;
·a flash memory 120, comprising secure objects 122;
·a projective capacitive (PCAP) touch screen 134, superimposed on an LCD display screen 132;
·controllers 144 and 142 for the touch screen and the display screen, respectively;
·item 150 (not explicitly stated, but likely a system in package (SiP)), including:
oa secure element 152; and
oa contactless front-end (also known as a Near Field Communication (NFC) controller) 154.
As explained in paragraph [78], a system on chip (SoC) is “an integrated circuit that integrates components of a computing system in a single chip”, a package-on-package (PoP) is a design where “[s]ome blocks, such as additional integrated circuits, typically memory (flash or RAM), may be packaged separately and stacked on the top of the SoC”, wherein a system in package (SiP) is a design where “some blocks, such as additional integrated circuits, may be comprised in distinct integrated circuits (or dies) but packaged together”.
With respect to the information interchange between the elements or components, as illustrated on Fig. 1, it is further explained that SPI refers to serial peripheral interface and i2C refers to inter-integrated circuit interface, which are both “serial interfaces known in the art for attaching integrated circuits (ICs) such as processors and microcontrollers”; whereas MIPI-DSI and eDP refer to mobile industry processor interface display serial interface and embedded display port, respectively, which are both “communication protocols and serial buses between host and device, as would be recognized by someone skilled in the art” (at [94]).
While the device is described with a reasonably high level of specificity, it is important to note that:
“[89] In some embodiments, the electronic device 100 may be implemented as any device comprising the components needed to carry a method and a system detailed hereinafter. In some embodiments, the electronic device 100 may be a smartphone, a smartwatch and/or a wearable computer, a PDA, a tablet and a computer. In some alternative embodiments, the device may also be embedded in or on objects not solely dedicated to computing and/or information processing functions, such as, but no limited to, a vehicle, a piece of furniture, an appliance, etc.” (underlining added)
The method and system in question are described by reference to the remaining drawings, from which I consider Fig. 2 and Fig. 3 most illustrative. Before discussing these figures, it is useful to emphasise the statement that the “inventor(s) have devised method and systems for generating an unpredictable sequence of dynamic keys to be used for authentication of one component to another. The unpredictably is based on the use of a dynamic secret that is shared between the two components and updated in an unpredictable way, such as through the use of noise, at each transaction” (at [12], underlining added). This essentially means that, at each transaction, the information about the noise must be somehow transferred from the first component (the one that is being authenticated) to the other component to serve as (the basis for) the shared dynamic secret.
Fig. 2, reproduced below, is explained at paragraphs [95]-[100]. It “depicts a secure architecture system 200 in accordance with some embodiments of the current technology” (at [95]). All modules of Fig. 2 may be executed by the touch screen controller 144, however this is not essential, as they can also be executed by the secure element 152 or by the ISA 115.
The KeyBlock 206 represents, for example, a PIN entered on the touch screen 134. A current version of the noise 207 (corresponding to the current transaction) is also collected or otherwise acquired. It should be noted that the index (i) denotes a current version or value, whereas the index (i-1) denotes a previous version or value. A number used only once (nonce) 208 may also be generated by a pseudo random number generator (not depicted). The KeyBlock 206, the current version of the noise 207, and the nonce 208, are concatenated together to form the cleartext 209. Then, the cleartext is encrypted using a public key 204 (e.g., acquired from the memory) to generate the cyphertext 218.
In addition, the first current version of the key serial number (KSN) 234 is generated, e.g., by using a function that mixes the previous version of the noise 226 (acquired from the memory, and being the version of the noise from a previous transaction) and the previous version of the KSN 228, through a number of logical or arithmetic operations such as shifting, XORing, addition, etc.
The first current version of the KSN 234 is, then, used to generate a first current version of the dynamic unique key 242 (to be used in the current transaction) on the basis of the first previous version of the dynamic unique key 232 (which was a current version when used in a previous transaction).
Then, the so-generated first current version of the dynamic unique key 242 is used to generate a message authentication code (MAC) 252 that is sent together with the cyphertext 218 and can be used for authenticating the ciphertext 218 (sometimes referred to as the message) as well as for authenticating the originator of the message, e.g., the touch screen controller 144.
Fig. 3, reproduced below, is explained at paragraphs [101]-[108]. It “depicts a secure architecture system 300 used for authentication in accordance with some embodiments of the current technology” (at [101]).
At item 310, a second current version of the KSN 315 (being identical to the first current version of the KSN 234) is generated. Then, at item 320, the second current version of the second dynamic unique key 325 is generated on the basis of the second previous version of the second dynamic unique key. Generally, item 320 may function exactly as item 240 on Fig. 2.
Then, the so-generated second current version of the second dynamic unique key 325 is used to generate a control message authentication code (CMAC) 335 which, in turn, is used (at item 340) for authenticating the received ciphertext 218 as well as for authenticating the originator of the message.
After successful authentication by comparing CMAC 335 and MAC 252, item 340 sends the cyphertext 218 to item 350, where the cyphertext 218 is decrypted using private key 329 stored in the secure element 152 and corresponding to the public key 204. The decryption results in revealing the cleartext 209, which includes the KeyBlock 206 (e.g., the PIN), the nonce 208, and importantly, the current version of the noise 207. As mentioned above, the versions of the noise represent the shared dynamic secret used for the generation of the dynamic unique keys.
It should be noted that the above is not intended to be a comprehensive discussion of the described invention and all of its embodiments. Instead, it is limited to the concepts necessary to understand the claimed invention, and I will provide a more detailed analysis on some parts of the body of the Specification later in this decision as necessary.
The claimed invention
The Specification ends with 22 claims. Claims 1 and 22 are independent and reproduced below. To assist readability, I have made slight formatting changes to the text.
Claim 1
“A method for
generating an encrypted and authenticated message by a first component of an electronic device and
receiving the encrypted and authenticated message by a second component of the electronic device,
the message authenticating the first component as an originator of the message,
the method comprising:
receiving touch events at an input device of the first component that identify a personal identification number (PIN);
identifying touch event characteristics of the touch events;
generating a block of information comprising a concatenation of the PIN and the touch event characteristics;
encrypting the block of information comprising the concatenation of the PIN and the touch event characteristics
based on a first encryption key acquired from a first memory of the first component
associated with a second decryption key in a second component of the device
so as to generate an encrypted block of information;
accessing, from the first memory of the first component, a first previous version of a first dynamic unique key,
the first previous version of the first dynamic unique key being at least partially based on a first original unique key;
generating a first current version of the first dynamic unique key
based on the first previous version of the first dynamic unique key;
generating a message authentication code (MAC)
based on
the encrypted block of information and
the first current version of the first dynamic unique key; and
transmitting, to the second component the encrypted block of information and the MAC;
receiving, at the second component, the message comprising the encrypted block of information and the message authentication code;
accessing, from a second memory of the second component, a second previous version of a second dynamic unique key,
the second previous version of the second dynamic unique key being at least partially based on
a second original unique key and
a previous version of the touch event characteristics;
generating a second current version of the second dynamic unique key
based on the second previous version of the dynamic unique key;
generating, at the second component, a control MAC
based on
the received encrypted block of information and
the second current version of the second dynamic unique key; and
upon determining that the control MAC matches the MAC,
determining that the message is authentic and that therefore the first component originated the message.”
Claim 22
“A system for
generating an encrypted and authenticated message
for authenticating a first component of the system as an originator of the message,
the system comprising:
a processor;
a non-transitory computer-readable medium comprising instructions;
the first component comprising a first memory,
the first component being operatively connected to the processor;
a second component comprising a second memory,
the second component being operatively connected to the processor and the first component;
the processor, upon executing the instructions, being configured to cause:
receiving touch events at an input device of the first component that identify a personal identification number (PIN);
identifying touch event characteristics of the touch events;
generating a block of information comprising a concatenation of the PIN and the touch event characteristics;
encrypting, at the first component, the block of information
based on a first encryption key acquired from the first memory
associated with a second decryption key in the second memory of the second component
so as to generate an encrypted block of information;
accessing, from the first memory, a first previous version of a first dynamic unique key,
the first previous version of the first dynamic unique key being at least partially based on a first original unique key;
generating, at the first component, a first current version of the first dynamic unique key
based on the first previous version of the first dynamic unique key;
generating, at the first component, a message authentication code (MAC)
based on
the encrypted block of information and
the first current version of the first dynamic unique key;
transmitting, by the first component to the second component, the encrypted block of information and the MAC;
receiving, at the second component, the message comprising the encrypted block of information and the message authentication code;
accessing, from a second memory of the second component, a second previous version of a second dynamic unique key,
the second previous version of the second dynamic unique key being at least partially based on
a second original unique key and
a previous version of the touch event characteristics;
generating a second current version of the second dynamic unique key
based on the second previous version of the dynamic unique key;
generating, at the second component, a control MAC
based on
the received encrypted block of information and
the second current version of the second dynamic unique key; and
upon determining that the control MAC matches the MAC,
determining that the message is authentic and that therefore the first component originated the message.”
Comparing the independent claims, I note that claim 1 is directed to a particular method, and involves a first component having an input device and a first memory, and a second component having a second memory; whereas claim 22 is directed to a system including a first component having a first memory (and also an input device), a second component having a second memory, a non-transitory computer-readable medium comprising instructions, and a processor configured to perform essentially the same method by executing the instructions. I consider that, for the purposes of my decision, these differences do not appear sufficiently material to warrant separate detailed considerations of the two independent claims. It seems that the Opponent did not distinguish the two independent claims either.
The person skilled in the art and the declarants
The hypothetical person skilled in the art is a well-established legal concept and, since the applicable legal principles are not in dispute, I do not consider it necessary to discuss the relevant Authorities. The Opponent submits that:
“2.2 The person skilled in the relevant art is a person who is one or more of:
2.2.1 a cryptographer;
2.2.2 an electronic engineer;
2.2.3 a systems engineer;
2.2.4 a systems and/or design engineer skilled in the field of payment system design as it relates to point of sale systems, payment devices, gateways, and transaction authorization, including the design of payment terminals, their associated communication networks, their software, hardware and firmware and their security and authorization software, hardware and firmware, and the use of the same;
2.2.5 an engineer responsible for or involved in the design, manufacture, and/or use of payment terminals, their associated communication networks, their software, hardware and firmware and their security and authorization software, hardware and firmware; and the use of the same;
2.2.6 a technician responsible for, or involved in, the use of payment systems for point-of-sale systems, payment devices, gateways, and transaction authorizations; and with consequent knowledge and experience in the use of payment terminals, their associated communication networks, their software, hardware and firmware and their security and authorization software, hardware and firmware; and the use of the same;” (the ASGP)
The Applicant does not appear to disagree, and for the benefit of the Opponent, I am prepared to proceed on the basis of their characterisation of the person skilled in the art, perhaps without giving too much weight to some more specific aspects of what that person would, according to the Opponent, be expected to be knowledgeable of and experienced with.
The Opponent provides evidence from Mr Koch, who is “a Principal Patent Attorney at Pizzeys Patent and Trade Mark Attorneys Pty Ltd, and [is] representing the Opponent” (Koch at [1]). As also noted by the Applicant (AS at [12]), there is no evidence to suggest that Mr Koch has the relevant technical knowledge and experience to be able to provide expert evidence in this opposition. Appropriately, in his short 6-paragraph declaration, Mr Koch does not attempt to provide technical evidence; instead, he simply presents submissions clearly marked as such with the expression “[t]he Opponent submits:” (Koch at [4]-[6]).
In contrast, the Applicant provides evidence from Professor Esmailzadeh, and submits that:
“[13]. … the Applicant’s witness, Professor Esmailzadeh explains specifically how he has acquired relevant knowledge, training and experience and annexes a CV setting out that experience in detail.
[14]. Prof. Esmailzadeh has qualifications in electrical engineering and has been involved in the field of mobile communication technologies since 1991. Prof. Esmailzadeh has taught cryptography courses for 12 years covering topics such as data communication, digital transformation, information security, securing mobile environments, cyber security and its implementation in organisations. Prof. Esmailzadeh considers that the Application ‘describes technology that I had a practical interest in due to my involvement in this field’.” (AS, reference(s) omitted)
The Opponent has had the opportunity to dispute the above submissions, or file any other observations with respect to the suitability of Professor Esmailzadeh, but chose not to do so. Upon reviewing his declaration (i.e., Esmailzadeh) and his curriculum vitae (i.e., Annexure RE2), I have no reasons to conclude that Professor Esmailzadeh is not qualified to give evidence in this opposition.
The common general knowledge
The common general knowledge at the priority date is another well-established legal concept, and it is closely related to the person skilled in the art. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21, the High Court noted that:
“50. Although the threshold of inventiveness has been raised as explained by the legislative changes referred to above [i.e., the introduction of the Act as compared to the pre-1990 law], case law developed previously continues to be relevant, not least because the legislation employs many familiar terms, such as ‘common general knowledge’. …
…
55. ‘Common general knowledge’ was well understood as being ‘part of the mental equipment of those concerned in the art under consideration’, and Minnesota Mining had confirmed that what was ‘known or used’ in Australia was confined to common general knowledge, which was explained as:
‘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’.
…
56. Whether a patent is obvious under the Act is still to be determined by reference to the hypothetical non-inventive worker in the field (now a ‘person skilled in the relevant art’ (ss 7(2) and 7(3)) equipped with common general knowledge, as stated by Aickin J in Minnesota Mining and followed since. …” (underlining added, reference(s) omitted)
The Opponent provided some assertions as to the content of the common general knowledge in part 2.3 of the ASGP. Additionally, the submissions in Koch at [4]-[6] with respect to documents D25 and D26 could be considered as implying that these documents were part of the common general knowledge.
The Applicant submits:
“[98]. The Opponent has not provided any evidence from a person skilled in the art as to the content of the common general knowledge. The Koch declaration makes assertions about what would have been well-known (i.e. prior art document D26). Mr Koch provides nothing to indicate that he is qualified to give expert opinion evidence on the content of the common general knowledge.” (AS, underlining added, reference(s) omitted)
I acknowledge the correctness of the Applicant’s submissions as well as the fact that it is the Opponent who has the onus; however, I also note that Professor Esmailzadeh did not appear to explicitly comment on the issue of the common general knowledge either.
In the absence of clear evidence on what exactly constituted part of the common general knowledge and what did not, it may only be possible to reasonably infer in broad terms what would likely form part of “the background knowledge and experience which is available to all in the trade”. In other words, having identified the person skilled in the art, and bearing in mind that this is “some person acquainted with the surrounding circumstances as to the state of [the] art and manufacture at the time” (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [24]), some reasonable inferences could be made. For example, without being exhaustive or conclusive, I consider that the person skilled in the art would have knowledge about the design and inner workings of digital electronic devices with user input capabilities, the common technologies for information transfer between elements and components of such electronic devices, and the well-known encryption techniques. I am even prepared to accept that the skilled person would be aware at least of the existence of the most relevant industry standards mentioned in the Specification, e.g., at paragraphs [07], [23], [77], [97], and [100]. However, in the absence of any evidence, I cannot go much further than that.
Claim interpretation and clarity
The principles of claim interpretation (sometimes referred to as the rules of construction) as well as the requirements that the claims must be clear are well settled. A helpful summary is provided by the Full Court of the Federal Court in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, citing with approval from an earlier decision:
“13 In Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331, Hely J considered at length the approach to construction of a specification and, in particular, the circumstances in which uncertainty might lead to invalidity. At [71]-[78] his Honour identified the following principles:
·The monopoly must be defined in a way that is not reasonably capable of being misunderstood.
·In determining the nature and extent of the monopoly claimed, the specification must be read as a whole, but recognizing that the parts have different functions. The claims mark out the legal limits of monopoly. What is not claimed is disclaimed. The specification describes how to carry out the process and the best method known to the patentee of doing so.
·Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of the monopoly as fixed by a claim by adding glosses drawn from other parts of the specification. If a claim is clear, it is not to be varied, qualified or made obscure by statements found elsewhere in the document.
·It is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. When the language of the claims is obscure or doubtful such doubts may be resolved by reference to the specification.
·It is not necessary that the claims be construed without reference to the body of the specification in order to see whether there is any ambiguity. The document is construed as a whole. If the specification demonstrates an intention that words used elsewhere have a particular meaning, effect should be given to such a ‘dictionary’.
14 At [79]-[81] his Honour then continued:
…
[81] Other principles of construction which may be of assistance in the resolution of the present matter include:
·A patent specification should be given a purposive construction rather than a purely literal one …
·The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in a specification are to be given the meaning which the hypothetical addressee would attach to them, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification.
·There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe.
·It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.
·As a general rule, the terms of a specification should be accorded their ordinary English meaning.
·Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
·However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
·Section 116 of the 1990 Act provides that the court may, in interpreting a complete specification, refer to the specification without amendment. However, it is neither useful nor legitimate to do so where the amended specification is clear.” (original italic, underlining added)
The High Court in Interlego A.G. v Toltoys Pty. Ltd. [1973] HCA 1; (1973) 130 CLR 461 also stated (at p. 479) that:
“14 … If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification …” (underlining added)
It is important to note that the claims are to be interpreted purposively on the basis of the actual wording chosen by the Applicant as clarified, when necessary, by the body of the Specification. Nonetheless, if the Specification includes a “dictionary”, this should be taken into account for the purposes of claim construction.
Claim interpretation
It appears that a significant portion of the Opponent’s case depends on the interpretation of the expression “identifying touch event characteristics of the touch events” and, in particular, what is included in the meaning of the phrase “touch event characteristics”. According to the Opponent, “the ‘touch event characteristics’ are not defined by the specification. These ‘characteristics’ could cover one or more characters of the PIN for example” (the ASGP in 1.2.1.3 and other places, underlining added). In somewhat similar fashion, the Opponent submits that “the ‘touch event characteristics’ are so broad and not even disclosed in the specification such that these ‘touch event characteristics’ could simply be a selection of an ‘OK’ button on the input device” (the ASGP in 3.1.3.1, underlining added).
Since the touch event characteristics are characteristics of the touch events, it is useful to start by establishing the meaning of the phrase “touch events”. Taking into account that the touch events (i) are received at an input device of the first component and (ii) identify a personal identification number (PIN), a trivial inference is that the input device must be of the type where the user input (in this case, the PIN) is entered by touching the device. Hence, the phrase “touch events” should plainly refer to the events of touching the input device. Professor Esmailzadeh explains that “[a] ‘touch event’ is any touch-based interaction of a user with a touch screen of an electronic device” (Esmailzadeh at [18]). Since a “touch-based interaction” in essence would appear to mean touching something, I cannot see any material differences between Professor Esmailzadeh’s interpretation and the plain English meaning. Hence, in the context of the claims, I will proceed on the basis that the phrase “touch events” means events, each one representing touching of the input device while inputting a PIN.
It is worth noting that the above interpretation does not appear to be inconsistent with the way in which the phrase “touch events” is used in the body of the Specification. For example, when referring to the items depicted in Fig. 1 and Fig. 2, it is explained that:
“[110] The user may have entered, with his fingers or with an electronic pencil, on the PCAP touch screen 134 superimposed on the LCD display 132, a PIC [i.e., personal identification code] in an application of the electronic device 100 in the context of a financial transaction. The user may then have pressed a confirmation button. The touch screen controller 144 may receive and convert the analog touch events entered by the user on the PCAP touch screen 134 superimposed on the LCD display 132 into a digital signal in the form of touch event inputs. Touch event inputs may then be further processed in their digital form, for example to generate a sequence of key presses or ‘key block’, such as Key Block 206, comprised in the cleartext 209.” (underlining added)
Input devices, designed to receive touch events that identify a PIN (or PIC), operate by converting detected touch events (i.e., their properties) into a series of characters representing the PIN (or PIC). As explained by Professor Esmailzadeh:
“18 … Referring to the example of a PIN input, when a user enters their PIN at the device, data from each touch event is used to identify both:
i. the characters of the PIN; and
ii. touch event characteristics associated with the touch event.
19 A ‘touch event characteristic’ is not a character of the PIN and is instead a characteristic associated with a touch event that can be obtained from the touch event or environment of the touch screen controller at the time of the touch event. A touch event characteristic (e.g. the co-ordinates of the point where the screen was touched) can be used to determine a character of the PIN. A touch screen may be viewed as a grid where a range of coordinates define, for example, a rectangular area of the touch screen corresponding to a character of the PIN pad. When a user enters their PIN at the device, the device determines the coordinates of the touch input and uses these coordinates to determine the character of the PIN that is being touched.” (Esmailzadeh, underlining added)
The Opponent chose not to provide expert evidence contradicting the above.
Importantly, Professor Esmailzadeh’s explanation of the phrase in question is also supported by the context of the claims. The claims define the step of “generating a block of information comprising a concatenation of the PIN and the touch event characteristics”. If I were to assume that the touch event characteristics in the claims could include characters of the PIN, the claims would define a concatenation of the PIN (being itself an ordered sequence of characters) and some or all of its characters, which appears to make no practical sense on purposive construction. Hence, even if I were to assume that the PIN characters potentially could, in general, be considered touch event characteristics, such interpretation does not appear to be the correct one in the context of the claims. Similar reasoning applies with respect to the “selection of an ‘OK’ button”, with the possible additional argument that this selection does not actually identify a PIN (e.g., it may identify that the PIN input has concluded, but not the PIN itself).
Regardless, to the extent any doubt about the exact meaning of the phrase “touch event characteristics” still exists, this could be resolved by reference to the body of the Specification. The following explanation is provided with respect to Fig. 1 and Fig. 2:
“[97] … The touch screen controller 144 may receive or acquire a PIN in the form of a KeyBlock 206 whose value may be for example [9,8,7,6]. In some embodiments, to increase the unpredictability of the method, the touch screen controller 144 may further receive or acquire a current version of the noise 207, wherein the current version of the noise 207 may be collected from the environment of the touch screen controller 144, such as from the randomness of touch event coordinates and/or the timing of the touch events. In other embodiments, the current version of the noise 207 may be generated by a TRNG [i.e., true random number generator] (not depicted) on the electronic device 100. In some embodiments, the current version of the noise 207 may be a combination of multiple random noises (not depicted) collected from multiple components of the electronic device 100.” (underlining added)
In line with the Opponent’s concerns that the touch event characteristics are not defined or disclosed, I note that the body of the Specification does not use the exact phrase “touch event characteristics” outside what appears to be consistory statements, and the embodiments of the invention are described using the word “noise”. However, it is important to emphasise that the above quotation describes several ways to receive or acquire the noise, i.e., it can be (i) “collected from the environment of the touch screen controller 144, such as from the randomness of touch event coordinates and/or the timing of the touch events”; (ii) “generated by a TRNG (not depicted) on the electronic device 100”; and (iii) “a combination of multiple random noises (not depicted) collected from multiple components of the electronic device 100”.
I consider that the way of acquiring the noise at (i) can be reasonably described as “identifying touch event characteristics of the touch events”, the specific examples of touch event characteristics being “the randomness of touch event coordinates and/or the timing of the touch events”. Therefore, it appears that the touch event characteristics are a specific kind of noise, and the claims are limited to this specific kind of noise. While the description provides only two examples for touch event characteristics, this was sufficient for Professor Esmailzadeh to consider further possibilities:
“21 … After reading the specification, I consider that other touch event characteristics could be used, depending on the capability of the device to detect and generate data for these characteristics, including:
i. the pressure of the touch event;
ii. the time delay between touch events;
iii. the size of the touch event;
iv. the temperature of the touch event;
v. the intensity of background light at the time of the touch event;
vi. the altitude of the device at the time of the touch event; and
vii. the noise of the environment detected at the time of the touch event.” (Esmailzadeh, underlining added)
While it could potentially be argued that examples v.-vii. above are not, in fact, characteristics of the touch event itself, they are still related to, and dependent on, the time of the touch event, which is clearly a characteristic of the touch event. Hence, they could be considered indirect characteristics of the touch event. Again, the Opponent chose not the provide any contradicting evidence.
As a final consideration, it is clear that, in order for the touch event characteristics to be concatenated with the PIN, they must be in the form of a sequence of characters.
On the basis of the above analysis, I conclude that the expression “touch event characteristics of the touch events” refers to a sequence of characters representing one or more of the properties or attributes of the physical touches that are used to enter the PIN at the input device of the first component, as distinct from the information content of the entered input, which is the PIN itself. Another distinction with the PIN is that the touch event characteristics would be truly random and different every time the same PIN is inputted.
Clarity
Subsection 40(3) stipulates that “[t]he claim or claims must be clear and succinct and supported by matter disclosed in the specification” (underlining added).
The Opponent contends that the claims are not clear and outlines three issues with the independent claims. The first issue is explained as follows:
“4.3.1 Independent claims 1 and 22 include the step of ‘accessing, from a second memory of the second component, a second previous version of a second dynamic unique key, the second previous version of the second dynamic unique key being at least partially based on a second original unique key and a previous version of the touch event characteristics’. It is not clear whether the step is intended to cover:
·the ‘second previous version of the second dynamic key’ being based on the ‘previous version of the touch event characteristics’; or
·‘accessing, from a second memory of the second component, a second previous version of a second dynamic key…and a previous version of the touch event characteristics’.” (the ASGP, underlining added)
I find this issue somewhat contrived. Firstly, applying the rules of English grammar to the text in question (i.e., considering the order of the phrases, and the lack of a comma between “key” and “and” as underlined above) suggests that the second previous version of the second dynamic unique key must be at least partially based on (i) a second original unique key and (ii) a previous version of the touch event characteristics. Secondly, on purposive construction, explicitly defining, in the independent claims, the action of accessing the previous version of the touch event characteristics from the second memory would appear unnecessary (thus redundant), since these claims do not explicitly define any subsequent step or action that requires this previous version of the touch event characteristics. Based on the above, I do not consider that this issue could result in a lack of clarity.
As for the second issue, the Opponent submits:
“4.3.2 Independent claims 1 and 22 include the steps of ‘identifying touch event characteristics…’, ‘generating a block of information…’, ‘encrypting the block of information…’, ‘accessing, from the first memory of the first component, a first previous version of a first dynamic unique key…’, ‘generating a first current version of the first dynamic unique key…’, ‘generating a message authentication code (MAC)…’, ‘transmitting, to the second component, the encrypted block of information and the MAC’. It is not clear what performs these steps.” (the ASGP, underlining added)
The third issue is, in essence, the same as the second issue, however it is raised with respect to “the steps of ‘accessing, from a second memory of the second component, a second previous version of a second dynamic unique key…’, ‘generating a second current version of the second dynamic unique key…’, and ‘upon determining that the control MAC matches the MAC, determining that the message is authentic…’ (the ASGP in 4.3.3) .
Regarding the second and third issues, I do not see any clarity concerns either. I note that the independent claims define:
“1. A method for generating an encrypted and authenticated message by a first component of an electronic device and receiving the encrypted and authenticated message by a second component of the electronic device …
…
22. A system for generating an encrypted and authenticated message for authenticating a first component of the system as an originator of the message, the system comprising:
a processor;
a non-transitory computer-readable medium comprising instructions;
…
the processor, upon executing the instructions, being configured to cause:
…” (underlining added)
Thus, on purposive construction, the entity performing at least some of the steps listed by the Opponent can be ascertained.
Regardless, even if I assume that it is indeed “not clear what performs these steps”, the Opponent failed to explain how this would make the scope of the claims uncertain, and I cannot identify any reasons to conclude that this would be the case.
In addition to the Opponent’s submissions, I note that the independent claims include the step of “generating a second current version of the second dynamic unique key based on the second previous version of the dynamic unique key” (underlining added). However, it is abundantly clear on purposive construction that the step must refer to the second previous version of the second dynamic unique key.
In summary, I am not satisfied that any one of the claims has any clarity issues that cannot be resolved by applying the rules of construction.
Novelty and inventive step
The relevant parts of s 18 stipulate:
“(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:
…
(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; …”
Novelty
The well-established test for novelty can be found in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 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…”
This test requires that all essential features of the claimed invention are disclosed in the prior art document. The level of disclosure in the prior art document was considered in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 486 as being such that the document “… must contain clear and unmistakeable directions to do what the patentee claims to have invented … A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
As explained in part 1.2 of the ASGP, the Opponent asserts that independent claims 1 and 22 are not novel in light of each one of documents D1-D5 and D7. No further elaboration or supporting expert evidence is provided in the evidence in support.
I must emphasise that each time the Opponent explains how the essential features of the independent claims are disclosed in a particular one of documents D1-D5 and D7 (the ASGP in 1.2.1.3, 1.2.2.3, 1.2.3.3, 1.2.4.3, 1.2.5.3, and 1.2.6.3), the Opponent asserts (underlining added):
“the ‘touch event characteristics’ are not defined by the specification. These ‘characteristics’ could cover one or more characters of the PIN for example.”
In essence, the Opponent’s case on novelty with respect to each one of these documents appears to turn on a particular interpretation of the phrase “touch event characteristics”. I have already considered the meaning of this phrase and found that the touch event characteristics are distinct from the characters of the PIN. Therefore, I do not consider that the particular interpretation of the phrase, relied on by the Opponent for novelty, is correct, which makes their assertions on the issue somewhat tenuous.
Importantly, with respect to the disclosure in documents D1-D5 and D7 as compared to the essential features of claim 1, Professor Esmailzadeh notes:
“44 The specification of the Application describes an encryption and authentication method for authenticating a first component of an electronic device by a second component of the device that I consider to be new over D1-D5 and D7. For example, I do not consider each of D1-D5 and D7 describe each of the following features of claim 1 of the Application or their combination:
i. a method for generating an encrypted and authenticated message by a first component of an electronic device and receiving the encrypted and authenticated message by a second component of the electronic device, the message authenticating the first component as the originator of the message; and
ii. determining by the second component that the message is authentic and that therefore the first component originated the message.
45 I also do not consider each of D1-D5 and D7 describe each of the following features of claim 1 of the Application or their combination with each other or the combination of them with the features I mention in paragraph 44:
i. identifying touch event characteristics of the touch events for use in component authentication;
ii. generating a block of information comprising a concatenation of the PIN and the touch event characteristics;
iii. encrypting the block of information comprising the concatenation of the PIN and the touch event characteristics based on a first encryption key acquired from a first memory of the first component associated with a second decryption key in a second component of the device so as to generate an encrypted block of information; and
iv. accessing, from a second memory of the second component, a second previous version of a second dynamic unique key, the second previous version of the second dynamic unique key being at least partially based on a second original unique key and a previous version of the touch event characteristics.” (Esmailzadeh, underlining added)
In addition, Professor Esmailzadeh provides a detailed discussion of each one of documents D1-D5 and D7 (Esmailzadeh at [47]-[88]) to further elaborate on the features of the independent claims that are not disclosed in these documents.
The Opponent chose not to present any evidence in reply that could have potentially contradicted Professor Esmailzadeh’s views. On the evidence before me, I am not satisfied that any one of the claims is not novel in light of whichever one of the documents relied upon by the Opponent.
Inventive step
The test for inventive step was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (Wellcome Foundation):
“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.” (at [45], underlining added)
In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the
-CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)
That approach should be accepted.” (original italic, reference(s) omitted)
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:
“In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge …
Further, as recognised in Beecham Group Ltd’s (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51]-[52], underlining added, reference(s) omitted)
It is clear from the above that inventive step, or obviousness, is a question of fact, and this fact is “often” established by “the evidence of the experts”.
The Opponent submits that:
“2.1 … the subject matter defined does not involve an inventive step because it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of each claim.
…
2.4 … the subject matter defined would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of each claim, as particularized in paragraph 2.3 above [i.e., the asserted content of the common general knowledge], when that knowledge is considered together with information particularised in paragraphs 1.2.1 to 1.2.6 above [i.e. documents D1-D5 and D7] or any of the information particularised below [i.e. documents D6 and D8-D24].” (the ASGP, underlining added)
Regarding the content of the common general knowledge, as I already mentioned, the Opponent included some assertions in part 2.3 of the ASGP. However, the Opponent chose not to provide any expert evidence to substantiate these assertions or the above submissions. Instead, the evidence in support refers to two additional documents (D25 and D26) and submits that “[t]here is nothing in the Opposed Application that is new or inventive and this publication [i.e., document D25] proves that PCI [i.e., payment card industry (standards)] previously had not allowed it on customer off the shelf (COTS) devices, such as mobile phones” (Koch at [5]), and that “the Rukhin paper [i.e., document D26], which is referenced in the PCI standards document, demonstrates some of the cryptography schemes that were well known before the priority date of the Opposed Application” (Koch at [6]).
I find the present situation regarding the expert evidence (or the lack of it) somewhat unusual. It is perhaps worth noting that the Full Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 (Emperor Sports) observed:
“32 In considering who is the appropriate skilled person, and what such person might be reasonably expected to do when faced with the problem in hand, sometimes, indeed often, evidence may not be necessary. In many instances the answers will be obvious to the parties, the Commissioner and the Court. In high technology areas for example it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them. No evidence is required.” (underlining added)
In isolation, the underlined sentence above might appear to suggest that evidence may not always be required for inventive step analysis. However, I consider that the underlined sentence should be interpreted in the context of the entire quoted paragraph (including the given example) and the Emperor Sports decision as a whole. Importantly, that decision was made before the RTB Act and broadly concerned the potential actions of the person skilled in the art with respect to ascertaining (as required by the Act then) different documents that could be relevant to addressing the problem. Ultimately, the specific question was whether “a Rugby League or Australian Rules coach, referee, umpire or administrator would conduct a search in the United States Patent Office”, and the Full Court decided that it is “self-evident” that this “could not be reasonably expected” (at [35]).
In the circumstances of the present case, I do not believe that the expression “what such person might be reasonably expected to do when faced with the problem in hand”, as used in Emperor Sports, can be reasonably interpreted as extending to the above test of Wellcome Foundation. In other words, given that the claimed invention does not appear, on its face, to be of trivial or routine nature, I do not consider that I can resolve the question of inventive step without proper expert evidence.
In my opinion, by failing to provide any expert evidence, the Opponent clearly has not discharged their onus. In light of the above discussion of the relevant case law, based on the evidence before me, I cannot find that any one of the claims lacks an inventive step.
Manner of manufacture
The law on manner of manufacture
The relevant parts of s 18 stipulate:
“(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
…
(2) Human beings, and the biological processes for their generation, are not patentable inventions.”
A number of Court decisions have discussed and determined whether the particular invention in each case “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”. These Court decisions constitute a significant body of case law that the Commissioner must follow. For the purpose of this decision, I do not consider it necessary to provide a comprehensive review of the case law and I will only point to Court decisions which I consider pertinent to the instant considerations.
National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 (NRDC) is the seminal authority on the issue, establishing, inter alia, the general approach for deciding the question of manner of manufacture at [14] (at p 269):
“The right question is: ‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?’”
D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) is a much more recent High Court decision on manner of manufacture; however, I note that both NRDC and Myriad are not related to inventions implemented on, or concerning, electronic or computing devices (as is the present case). Hence, they do not discuss some of the more specific issues associated with such inventions. In contrast, the decisions of the Full Court of the Federal Court in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates) and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL Central) were made with respect to business methods implemented on computing devices. In particular, in RPL Central the Full Court, having considered in some detail the decisions in Research Affiliates and Myriad, developed an approach to determining the issue of manner of manufacture for inventions implemented using computers. This approach of RPL Central was later approved in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass), which was a decision by an enlarged bench (consisting of five judges) of the Full Court. The approach was also relied on in subsequent Full Court decisions, including Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt) and Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223 (Repipe). The cases in Encompass, Rokt, and Repipe also involved inventions implemented using computer technology.
Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat’22) is the most recent High Court decision on manner of manufacture. Because, in that decision, the six judges were evenly divided as to the outcome, there was no majority and no usual binding precedent. Importantly however, the outcomes of the above mentioned decisions of the Full Court were not criticised and remain undisturbed.
For the present purpose of deciding on manner of manufacture in relation to the Application, I consider it helpful to provide a brief overview of some of the main guiding principles that can be extracted from the above Court decisions. Below, I will present those principles, in italic, as separate paragraphs supported by relevant quotations from the decisions. Where the breadth of some quotations makes them relevant to more than one principle, for brevity, I will not repeat those quotations in different paragraphs (underlining added in all quotations).
A determination on manner of manufacture must be done on a case by case basis, having regard to the substance of the invention not merely the form of the claims; there are no strict rules or a precise formula to be applied mechanistically:
“The purpose of s. 6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound. It would be unsound to the point of folly to attempt to do so now, when science has made such advances that the concrete applications of the notion which were familiar in 1623 can be seen to provide only the more obvious, not to say the more primitive, illustrations of the broad sweep of the concept.” (NRDC at [15]; at p 271)
“This Court in NRDCdid not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.” (Myriad at [23])
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.” (Myriad at [144], reasons by Gageler and Nettle JJ)
“The approach to be taken to deciding whether a claimed method or product is properly the subject of letters patent must be flexible and must allow for new technologies presently unknown … There is no formula to be mechanically applied …
… in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of that claimed invention but also at the substance of that invention.” (Research Affiliates at [116]-[117])
“The determination … is made not by some mechanistic application of the criterion of artificiality or physical effect, but by an understanding of the claimed invention itself. The invention is to be understood as a matter of substance and not merely as a matter of form.” (Research Affiliates at [106])
The characterisation as “an artificially created state of affairs of economic significance” is useful, but not ultimately determinative for manner of manufacture; to be patentable, a process must belong to the useful arts:
“The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art … that its value to the country is in the field of economic endeavour.” (NRDC at [22]; at p 275)
“… the view which we think is correct in the present case is that the method the subject of the relevant claims has as its end result an artificial effect falling squarely within the true concept of what must be produced by a process if it is to be held patentable … The effect produced by the appellant’s method exhibits the two essential qualities upon which ‘product’ and ‘vendible’ seem designed to insist. It is a ‘product’ because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage, indeed to the lay mind a sensational advantage, for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits … It achieves a separate result, and the result possesses its own economic utility consisting in an important improvement in the conditions in which the crop is to grow, whereby it is afforded a better opportunity to flourish and yield a good harvest.” (NRDC at [25]; at p 277)
“If a process is to be patentable, it must offer some advantage which is material, in the sense that the process belongs to a useful art. The characterisation of patentability by reference only to the description in NRDC of a product which consists of an artificially created state of affairs of economic significance was part of the High Court’s reasoning but did not represent a sufficient or exhaustive statement of the circumstances in which a claimed invention is patentable.” (Research Affiliates at [101])
“In this context, their Honours emphasised [in Myriad] (at [20]) that, while satisfaction of an ‘artificially created state of affairs of economic significance’ as stated in NRDC may ‘suffice for a large number of cases in which there are no countervailing considerations’, this terminology is not to be treated as a formula exhaustive of the concept of manner of manufacture, or a formula which alone captures the breadth of the ideas to which effect must be given. Similarly, Gageler and Nettle JJ noted (at [125]) that the holding in NRDCdoes not mean that an ‘artificial state of affairs’ and ‘economic utility’ are the only relevant considerations in this context. However, the majority and Gageler and Nettle JJ acknowledged the usefulness of such characterisation in appropriate circumstances.” (RPL Central at [116])
In deciding on manner of manufacture, it is important to identify where the inventor’s ingenuity lies:
“It is a question of understanding what has been the work of, the output of, and the result of, human ingenuity, and to apply the principles that have been developed and explained so well in NRDC.” (Research Affiliates at [116])
“Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie.” (RPL Central at [112])
Technological innovations are patentable, whereas business innovations are not; a business method implemented on computing devices could be patentable if it involves ingenuity in the computer implementation:
“Relevantly, the Full Court in Research Affiliates said (at [94]) that the distinction to be drawn was between the employment of an abstract idea or law of nature and the idea or law itself and that there is a distinction between a technological innovation which is patentable and a business innovation which is not. Their Honours repeated an observation from Grant (at [29]) ‘[a] product of a method is something in which a new and useful effect may be observed. For claimed computer programs, the courts looked to the application of the program to produce a practical and useful result, so that more than “intellectual information” was involved.’ A technological innovation is patentable; a business innovation is not, although a business method may be the subject of letters patent.” (RPL Central at [100])
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions.” (RPL Central at [96])
“RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Accordingly, the ingenuity of the inventors must be in the steps of the method itself. The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method …
The problem may be one of confronting the ‘maze’ of available information concerning the RPL of different Units of Competency in different institutions, but the solution to that problem, to be patentable, must involve more than the utilisation of the well-known search and processing functions of a computer, for example an invention in the way in which the computer is utilised.” (RPL Central at [110]-[111])
“There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation. Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that. It is no part of the claimed method that there is an improvement in what might broadly be called ‘computer technology’.” (Research Affiliates at [118])
“In Research Affiliates, looking at the claimed method as a matter of substance, the Full Court concluded that, in that case, the computer was merely the means by which the analyst accessed data to generate an index, that being the work of the analyst rather than a technical generation by the computer. There was no suggestion of the utilisation of an unusual technical effect. The inventors made changes to the computer program to cause the program to gather and process data and perform data manipulations and calculations, including macros to manipulate and refine data. Such use of algorithms was not ‘foreign’ to the normal use of computers.” (RPL Central at [102])
“To reiterate some of the matters discussed in Research Affiliates:
·It is necessary to ascertain whether the contribution to the claimed invention is technical in nature. In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2007] 1 All ER 225, the subject matter was an interactive system whereby questions were asked, the answers incorporated in a draft and, depending on some particular answers, further questions were asked. It was held that, apart from the fact of running a computer program, there was nothing technical about the contribution and the method was for the business of advising upon and creating appropriate company documents.
·One consideration is whether the invention solves a ‘technical’ problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
·Does the claimed method merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea? In Alice Corporation, the method was for exchanging financial obligations in which the computer was used to create records, track multiple transactions and issue simultaneous instructions. The majority in the Supreme Court of the United States concluded that the use of the computer added nothing to the substance of the abstract idea of reducing settlement risk in exchanging financial obligations.” (RPL Central at [99])
Whether a method can or cannot be practically implemented without a computer is not determinative for manner of manufacture:
“Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method. Is the fact that the scheme cannot practically be implemented without a computer, that is, that the computer is integral to the working of the scheme, sufficient to make it patentable? The answer is not straightforward because this is not a case where the computer simply processes the information entered by the user, for example by using an algorithm, or retrieves information from the Internet in response to a user’s question.” (RPL Central at [107])
“Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.” (RPL Central at [97]-[98])
“It is stated in the specification, and was accepted by the primary Judge, that the method could not be carried out without the use of a computer. This alone cannot render the claimed invention patentable if it involves simply the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself. A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised (Research Affiliates).” (RPL Central at [104])
The case law on manner of manufacture was extensively discussed in prior decisions on the matter by the Australian Patent Office, including in Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Aristocrat’16), where the Delegate provided a general indication, distilled from the case law, as to the matters relevant to a determination on manner of manufacture for inventions implemented on a computer:
“35. 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.” (underlining added)
It is clear from the Delegate’s wording that the above list is not a “check-list” to determine whether a particular claimed invention is a manner of manufacture. Instead, the list includes, in a non-exhaustive manner, relevant considerations or “touch stones” helpful in the decision process. This was also noted in Todd Martin [2017] APO 33:
“47. With this list of points, the delegate in the Aristocrat[’16] case was not intending to indicate a list of conditions, for computer-implemented cases, to be met to define a manner of manufacture. That is evident from the delegate’s statement that the list was not intended to be exhaustive. Moreover, it would appear improper to find there was a manner of manufacture simply on the basis that one or more points could be answered in favour. In the present case for example, it may be that at least the fifth dot-point, regarding whether the application of the method produces a practical and useful result, is satisfied. On the other hand, that consideration on its own would be insufficient in the present case. Conversely it would also appear improper to find there was no manner of manufacture simply on the basis that one or more points could not be answered favourably. Rather than these points being seen as conditions to be met, they should be seen as relevant matters to consider, as the delegate stated at [35]. The substance and contribution of the claimed invention in each case should be considered on its merits overall and various points under the law would appear to have varying degrees of relevance depending on the case.” (underlining added)
As a further observation, it appears that the Court decisions on manner of manufacture for computer-implemented inventions do not always explicitly refer to all of the above relevant considerations, which would appear to suggest that, depending on the circumstances of the case, not all of the relevant matters included in the list need to be considered in order to reach a conclusion. It could also be said that some of the above considerations are somewhat overlapping in their scope.
Manner of manufacture consideration
The Opponent submits that “the subject matter claimed is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies” (the ASGP in 3.1), because of the following:
“3.1.1 The substance and contribution of the claimed invention is nothing more than an abstract idea, mere scheme or mere intellectual information. The contribution of the claimed invention is non-technical in nature. In particular, the contribution of the invention lies in a non-technical scheme or plan – a cryptography scheme.
3.1.2 The claimed invention does not solve a technical problem. In this regard, the invention seeks to address security threats in financial transactions using a cryptography scheme.
3.1.3 The claimed invention does not result in an improvement or advance in the functioning of a computer. In particular, the claimed invention is an implementation of a symmetric or asymmetric cryptographic techniques for at least the reasons discussed below.
3.1.3.1 Firstly, to the extent that the contribution of the invention resides in the use of ‘touch event characteristics’, the ‘touch event characteristics’ are so broad and not even disclosed in the specification such that these ‘touch event characteristics’ could simply be a selection of an ‘OK’ button on the input device.
3.1.3.2 Secondly, the use of dynamic keys for cryptography was known before the priority date. In any case, the claims are so broadly drafted such that they cover the current versions of the first and second dynamic keys being identical to the previous version of the respective first and second dynamic keys.
3.1.3.3 These cryptographic techniques and the implementation of these techniques in a computer were well known before the priority date of the Opposed Application. As such, the implementation of the cryptographic schemes by the electronic device according to the claimed invention is not an improvement or advance in the functioning of the computer.
3.1.4 The claimed invention requires generic computer implementation. There is no ingenuity in the way in which the computer is utilised and the invention does not involve steps that are foreign to the normal use of computers. To the extent that the contribution of the invention resides in the use of ‘touch event characteristics’, the ‘touch event characteristics’ are so broad and not even disclosed in the specification, which suggests that the implementation of the claimed invention using ‘touch event characteristics’ would be within the capabilities of a person skilled in the art.
3.1.5 The computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea. In this regard, the contribution of the claimed invention resides in specific information and keys used for the cryptography scheme.” (the ASGP, underlining added)
Considering the above quotation, I find that it represents, in essence, a list of statements without a significant amount of supporting explanations. While this could be somewhat acceptable for the purposes of a statement of grounds and particulars, the lack of more detailed explanations (e.g., no written or oral submissions) makes it difficult to fully understand the basis for the Opponent’s contentions.
The Opponent states that “[t]he claimed invention does not solve a technical problem” and that “the invention seeks to address security threats in financial transactions using a cryptography scheme”. I consider it worthwhile to reproduce the following part of the description, despite its length, as it provides a good indication of the problem being addressed and the proposed solution:
“[06] While many malevolent parties operate remotely from the systems and devices that they aim to compromise, in some cases they may also have physical proximity, or even direct access and control of a device or server, which allows them to use physical methods of compromising a system that are not possible remotely.
[07] Thus, some devices that perform encipherment of sensitive information do so in a hostile environment where the attacker may, to varying degrees, have access to the device interfaces or even be able to monitor or tamper with the internal components of the device, aiming to recover sensitive information prior to its encryption, or else to compromise cryptographic keys such that encipherment no longer protects sensitive information. This problem is particularly acute for terminals used in financial transactions, such as point-of-sale terminals or ATMs. For example, malicious entities as well as legitimate security researchers have devised or used sophisticated attacks to access private information processed by financial terminals, attacks that may involve using skimmers attached to electronic devices, replacing original and secure device components with counterfeit and insecure components, inserting information-disclosing bugs in the said devices, installing fake personal identification number (PIN) pads, and other methods to access the information in its unencrypted form. For this reason, standards applicable to the security of terminals, such as, but not limited to PCI-DSS and PCI-PTS, specify that terminals must put in place measures to detect and respond to physical tampering of the device, and so many such methods have been devised and implemented in commercial terminals.
…
[09] Considering the volume of financial information processed and exchanged daily via communication networks on mobile or other electronic devices and the potential for immediate financial gain for malevolent parties, tampering and hacking methods in the context of financial transactions effected on electronic devices that are deployed in a physically hostile environment, pose a threat to security. For the foregoing reasons, there is a need for methods and systems for authenticating a component of an electronic device.
…
[10] Embodiments of the present technology have been developed based on inventors’ appreciation that known approaches for authenticating a component of an electronic device may, in some instances, not be relied upon to conduct secured PIC entries, specifically in the context of secured financial transactions. Improvements are therefore desirable, in particular improvements aimed at assuring that a component of the electronic device is an originally manufactured component and that the device, being deployed in a physically hostile environment, has not been tampered with by malevolent parties aiming to replace the original component with a malicious component and thereby compromise the security of the device.
[11] The present technology arises from an observation made by the inventor(s) that while the usage of mobiles devices has been democratized, malevolent parties have devised sophisticated techniques to gain information from the physical implementation of a cryptosystem and that techniques that help ensure the physical integrity of the device when the device may be deployed in a hostile environment are an important aspect of securing information exchange and financial transactions.
[12] Therefore, inventor(s) have devised method and systems for generating an unpredictable sequence of dynamic keys to be used for authentication of one component to another. The unpredictably is based on the use of a dynamic secret that is shared between the two components and updated in an unpredictable way, such as through the use of noise, at each transaction.” (underlining added)
While I acknowledge that the problems generally associated with “securing information exchange and financial transactions” are not necessarily technical, this, on its own, cannot be conclusive for the purpose of deciding on manner of manufacture.
With respect to the solution (characterised by the Opponent as a cryptography scheme), the claimed invention is using a specific kind of noise, referred to as touch event characteristics of the touch events that identify the PIN entered by touching the input device of the first component. It is worth noting that the touch event characteristics are all physical parameters of the touch events that can be detected by, e.g., the input device. As this appears to be alluded to by the Opponent (see, e.g., the ASGP in 3.1.3.1 and 3.1.4 as quoted above), it is not unreasonable to infer that using these parameters or characteristics of the touch events is part of the contribution, or the substance, of the claimed invention. Indeed, this use of touch event characteristics does not seem to be part of the common general knowledge (even considering the common general knowledge as asserted by the Opponent in part 2.3 of the ASGP). Additionally, following from my discussion of novelty, this use does not appear to be disclosed in any of the documents D1-D5 and D7 as relied on by the Opponent. It could be argued that the physical detection of the touch event characteristics and the use of these characteristics as a basis for the component authentication process provides a certain technical character to the claimed solution.
Furthermore, the claims, in essence, define a solution that represents a way of authenticating one component of an electronic device, as an originator of an encrypted and authenticated message, by the device itself. Hence, the claimed invention involves the inner workings of a single electronic device, including the interaction between its components. I find it difficult to characterise the interaction between the components of a single electronic device as a cryptography scheme.
In my view, the improved ability of a device to detect the fact that a component, having an input device for inputting a PIN, was replaced or otherwise tampered with is somewhat more akin to the hypothetical ability of a locking device to stop working if the key insertion component was tampered with to reveal (to a malevolent party) the shape or profile of the key when it is inserted. Perhaps an even better analogy would be an electronic keycard operated locking device that is able to detect that the keycard reading component has been replaced or tampered with.
In the context of electronic and computing devices, it is worth comparing the effect of working of the present invention to those of the inventions in Re International Business Machines Corporation v Patrick Anselm Smith, Commissioner of Patents [1991] FCA 625 (IBM) and CCOM Pty Ltd and Ronald Howard Thomas v Jiejing Pty Ltd, Paravet Instruments Pty Ltd, Jeffrey John Yates and Eric Russell Chappell [1994] FCA 1168 (CCOM).
In IBM, the Court noted that:
“16. … What is new is the application of the selected mathematical methods to computers, and in particular, to the production of the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers and, for that reason, to be inventive. The production of an improved curve image is a commercially useful effect in computer graphics.” (underlining added)
In that case, “the selected mathematical methods” were based on the specific differences, in the way in which computers perform integer vs floating point mathematical operations. This produced an effect, which was independent of the specific curves themselves and quite general in its applicability, thus providing enabling functionality in the field of “computer graphics”.
Similarly, in CCOM, the Court decided that:
“43. What is claimed thus involves use of input entry keys designated so as to indicate the respective Chinese character stroke categories chosen, and the entry through those keys of search criteria. Those criteria include Chinese character stroke categories entered in a particular order. Upon entry of those search criteria there are retrieved from the graphic data storage means and displayed by the display means, that or each Chinese character which meets the search criteria.
…
128. … In the present case, a relevant field of economic endeavour is the use of word processing to assemble text in Chinese language characters. The end result achieved is the retrieval of graphic representations of desired characters, for assembly of text. The mode or manner of obtaining this, which provides particular utility in achieving the end result, is the storage of data as to Chinese characters analysed by stroke-type categories, for search including ‘flagging’ (and ‘unflagging’) and selection by reference thereto.” (underlining added)
Hence, the working of the invention can be characterised as an improvement in the way, in which Chinese characters are entered into a computer, regardless of the particular characters being entered and their information content. This has general applicability and provides enabling functionality in the field of computer text processing, and more particularly, processing text in Chinese language.
As a matter of substance, the presently claimed invention is not concerned with the information content entered through the touch events at the input device (i.e., the PIN itself). Instead, it detects the physical characteristics of the touch events and uses them as a basis for improving the authentication of the component, having the input device, for the purpose of ascertaining if the component has been replaced or tampered with, thus verifying the integrity of the device. Hence, the claimed invention goes beyond the mere intellectual information, and I find it very difficult to agree with the Opponent that it is “nothing more than an abstract idea, mere scheme or mere intellectual information”. Similarly, I do not agree that “the contribution of the claimed invention resides in specific information and keys used for the cryptography scheme”. In my opinion, the contribution, or the substance, resides not in the specific information and keys (i.e., in their content), but in the particular way of generating the specific information and keys on the basis of the touch event characteristics detected during the touch events identifying the PIN entered at the input device of the component that needs to be authenticated.
It would appear that the instant invention was developed in the context of electronic computing devices, with touch based input devices, being used for financial transactions. However, there are no reasons to believe (and certainly no evidence for that) that the applicability of the invention should be so limited. The Specification notes that:
“[02] … The system and method may be used, for example, in the context of private information entry on the electronic device to ensure that only authenticated components are able to process sensitive information.” (underlining added)
It is perhaps worth mentioning that “private information entry” (e.g., PINs, PICs, etc.) on electronic devices by touching is ubiquitous in the art.
It appears to me that the instant invention would be applicable to any scenario involving such devices where the authenticity of the component, having the touch based input device, needs to be ascertained for whatever reasons. One simple example that comes to mind, where the instant invention could potentially be applicable, is an electronic locking/access device that operates via entering a code or PIN by touching. This is completely unrelated to the field of financial transactions and would result in an improved locking/access device.
Based on the above, I conclude that the instant invention could be characterised as a technological improvement to the electronic devices in question, not dissimilar to the inventions in IBM and CCOM.
Finally, while it may be the case that “[t]he claimed invention requires generic computer implementation”, this consideration cannot render non-patentable what is an otherwise patentable invention.
In conclusion, following the above considerations, on the balance of probabilities, I am not satisfied that the Opponent has established that the invention claimed in any one of the claims is not a manner of manufacture.
Clear enough and complete enough disclosure
Subsection 40(2) stipulates:
“A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; …”
In Cytec Industries Inc. v Nalco Company [2021] FCA 970, Burley J noted with apparent approval that:
“143 In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker considered at [95] that it involved the following three steps:
(1) Construe the claims to determine the scope of the invention as claimed;
(2) Construe the description to determine what it discloses to the person skilled in the art; and
(3) Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
144 In the present case, the delegate (at [54]) added to these the further questions to be considered, citing Evolva SA [2017] APO 57 at [45]:
(1) Is it plausible that the invention can be worked across the full scope of the invention?
(2) Can the invention be performed across the full scope of the claims without undue experimentation?”
The Opponent does not attempt to engage with the relevant principles. As it was the case with their contentions on manner of manufacture, the Opponent’s contentions (in 4.1 of the ASGP) with respect to the presently considered ground of clear enough and complete enough disclosure represent a list of statements without much in terms of explanations. The statements assert that “[t]there is no disclosure in the specification as filed of [certain features] sufficient to enable a person skilled in the art to perform the invention to the full extent of the breadth of the claim without undue burden or the need for further invention”, these certain features being:
·“touch event characteristics”;
·“concatenation of the PIN and the touch event characteristics”;
·“the previous version of the touch event characteristics”;
·“the touch event characteristics is noise” as claimed in claim 2, because “[a]ccording to paragraph [97], ‘the current version of the noise 207 may be collected from the environment of the touch screen controller 144, such as from the randomness of touch event coordinates and/or the timing of the touch events’”; however, “[t]hat paragraph is not a sufficient disclosure to support touch characteristics being noise”;
·“the touch event characteristics comprises noise” as claimed in claim 20, because “[a]ccording to paragraph [97], ‘the current version of the noise 207 may be collected from the environment of the touch screen controller 144, such as from the randomness of touch event coordinates and/or the timing of the touch events’, which suggests that the noise comprises randomness of touch event coordinates timing of the touch events, suggesting that touch events are a subset of noise”; however, “[o]n the other hand, claim 20 suggests that noise is a subset of touch events collected from touch screen controller”.
While I am prepared to disregard the references to “the specification as filed” (noting that this specification does not appear directly relevant to the s 40(2)(a) considerations), importantly, the Opponent has not provided any expert evidence to support these statements.
It appears to me that, in essence, all of the statements are related to the use, in the claims, of the phrase “touch event characteristics”. I have already discussed the meaning of this phrase and concluded that it refers to a specific kind of noise and the claimed invention is limited to this kind of noise. While sometimes the drafting style and potential subsequent amendments during examination could create redundancies in the claim set (as might be the case with claim 2), I do not consider that, in the present case, this has the potential to create any issues, let alone issues under the presently considered ground of clear enough and complete enough disclosure. As for claim 20, it defines the additional feature that “at least one of the touch event characteristics comprises noise collected from a touch screen controller corresponding to the input device” (underlining added), hence it is not clear to me that it even introduces redundancies.
Professor Esmailzadeh explains:
“22 I was asked by FPA whether the specification of the Application provides a clear enough and complete enough description for me to be able to implement the method of claim 1, including the use of touch event characteristics. I consider that the specification of the Application provides me with a clear enough and complete enough description for me to implement the method. If I was to implement the method of claim 1, I would use an electronic device, such as a smart phone or smart tablet, that has a suitable sensing mechanism or capability to detect the touch event and measure the respective characteristic/s of the touch event so that these characteristic/s could then be used to generate a random number. I consider that, after having read the specification, the configuration of such electronic devices to perform the method of claim 1 would involve only routine development work.” (Esmailzadeh, underlining added)
Hypothetically, it might be possible that the above is reflective of the fact that Professor Esmailzadeh is highly qualified and experienced, and even possesses a certain degree of inventiveness as per his Curriculum Vitae (Annexure RE2); however, having reviewed the Specification, I have no reasons to disagree with his assessment.
In any event, in the absence of any evidence or even more detailed submissions by the Opponent, I do not consider that they have discharged their onus and established that the Specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
Best method
Subsection 40(2) stipulates:
“A complete specification must:
…
(aa) disclose the best method known to the applicant of performing the invention; …”
The Opponent submits:
“4.2.1 Independent claims 1 and 22 include the steps of ‘identifying touch event characteristics of the touch events’; ‘generating a block of information comprising a concatenation of the PIN and the touch event characteristics’; and ‘accessing, from a second memory of the second component, a second previous version of a second dynamic unique key, the second previous version of the second dynamic unique key being at least partially based on a second original unique key and a previous version of the touch event characteristics’.
4.2.2 There is no disclosure in the specification of the ‘touch event characteristics’ as claimed.
4.2.3 Accordingly, the specification does not disclose the best method known to the Applicant of performing the invention because a person skilled in the art is given no information as to how (let alone the best way known to the Applicant) to make or produce the claimed invention.” (the ASGP, underlining added)
No further elaboration is provided.
It would appear that the Opponent is actually asserting that the body of the Specification does not disclose any method of performing the invention, as there is no evidence (or even assertions) that the Applicant knew of a better method. Again, this is clearly related to the use, in the claims, of the phrase “touch event characteristics”. In view of my earlier discussions in relation to the meaning of the phrase in question as well as the ground of clear enough and complete enough disclosure, I do not consider that I need to go further into more specific analysis of the presently considered ground of best method. Based on these earlier discussions, and in the absence of any evidence to the contrary, I have no reasons to conclude that the Specification does not disclose a method of performing the invention, or that the disclosed method is not the best method known to the Applicant.
Support
Subsection 40(3) stipulates that “[t]he claim or claims must be clear and succinct and supported by matter disclosed in the specification” (underlining added).
In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck), Burley J observed that:
“546 In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
…to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
547 That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed.” (underlining added)
The Opponent submits that:
“4.4.1 Independent claims 1 and 22 includes [sic] the steps of ‘identifying touch event characteristics of the touch events’; ‘generating a block of information comprising a concatenation of the PIN and the touch event characteristics’; and ‘accessing, from a second memory of the second component, a second previous version of a second dynamic unique key, the second previous version of the second dynamic unique key being at least partially based on a second original unique key and a previous version of the touch event characteristics’.
4.4.2 When comparing the independent claims, in so far as the term ‘touch event characteristics’ is concerned, and the specification, it is clear that the claim scope extends beyond that justified by the contribution to the art, if any, provided by the specification.” (the ASGP)
Again, the absence of any more detailed submissions makes it unclear, for example, what the Opponent considers to be “the technical contribution to the art disclosed by the specification” and why it does not “justify the breath of the monopoly claimed” (as per Merck quoted above). Given my earlier finding that the body of the Specification does not use the exact phrase “touch event characteristics” outside what appears to be consistory statements, perhaps the Opponent is asserting that the use of touch event characteristics in the claims is not supported. However, I have already concluded that, while it appears that the embodiments of the invention are described using the word “noise”, the touch event characteristics are a specific kind of noise. This conclusion was based on what is disclosed in the body of the Specification, including the two examples given for what I considered could reasonably be described as “touch event characteristics”; as well as the fact that Professor Esmailzadeh was able to list a considerable number of additional examples of touch event characteristics. Importantly, he also states:
“24 … As I mentioned above, I understand that the characteristics associated with this touch event that would work with the method described in claim 1 are numerous and, depending on the sensing mechanisms or capabilities of the device, when a touch event occurs at the device different characteristics may be defined, measured and collected and used with the method described in claim 1.” (Esmailzadeh, underlining added)
It appears to me that “the technical contribution to the art disclosed by the specification” is related to the randomness of the touch event characteristics, hence the use of the word “noise” in the body of the Specification. I am not presented with any evidence that the touch event characteristics of the independent claims could be non-random, and I am unable to come up with an example for that. It follows that “the breath of the monopoly claimed” is justified, contrary to the Opponents submissions.
I have no reasons to conclude, on the balance of probabilities, that any one of the claims is not supported by matter disclosed in the Specification.
Conclusion and costs
I have found that all claims are clear and supported by matter disclosed in the Specification. In addition, I have found that the invention, claimed in any one of the claims, is a manner of manufacture, novel, and involves an inventive step. Furthermore, I have also found that the Specification discloses the invention in a manner which is clear enough and complete enough, and discloses the best method known to the Applicant of performing the invention. It follows that the opposition is unsuccessful on all grounds.
It is a normal practice that costs should follow the event, and I can see no reasons, in this particular case, to deviate from the normal practice. Since the opposition is unsuccessful, I will award costs according to Schedule 8 against the Opponent.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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