Robert Dommett v Zebra Research Pty Ltd - [2011] APO 53

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Robert Dommett v Zebra Research Pty Ltd [2011] APO 53

Patent Application: 2010201111

Title:A system and method for undertaking market research of a target population

Patent Applicant:  Zebra Research Pty Ltd
Requestor:  Robert Dommett
Delegate:  O L Haggar
Decision Date:  12 July 2011
Hearing Date:  13 April 2011, in Canberra
Catchwords:  PATENTS - requests under sections 32 and 36 – inventorship – whether subject matter in respect of which inventorship is claimed was made publicly available before the priority date – whether there is subject matter for inventorship to subsist in – no declaration under section 32 or 36 appropriate.

Representation: Patent applicant: Matthew Ward patent attorney of Shelston IP
Requestor:Chris O’Sullivan and Siew-Lee Hew patent attorneys of
FB Rice & Co

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010201111

Title:A system and method for undertaking market research of a target population

Patent Applicant: Zebra Research Pty Ltd
Date of Decision: 12 July 2011
DECISION
The subject matter embodied by the inventive concept disclosed by patent application 2010201111 was first developed by Robert Dommett.
That subject matter was made publicly available by or with the consent of Mr Dommett before the earliest priority date of patent application 2010201111. Mr Dommett had as a result forfeited any right to inventorship.
It is therefore inappropriate to make any determination under section 32 or any declaration under section 36 in Mr Dommett’s favour.
There is no award of costs.
REASONS FOR DECISION
Background

Patent application 2010201111 (the present application) was filed on 22 March 2010 by Zebra Research Pty Ltd (the applicant) claiming priority from provisional applications 2009903646 and 2009905141 respectively filed on 4 August and 20 October 2009. The inventor of record is Katie Harris. The present application is currently undergoing examination.
On 23 June 2010, Robert Dommett (the requestor) filed requests under sections 32 and 36 for a determination of the “correct eligible person” in respect of the present application, and for a declaration that he, and not Katie Harris, is the inventor.
After an exchange of evidence in support, the requestor filed his evidence in response on 29 November 2010. On 14 December 2010, the applicant advised that it did not intend to file evidence in response, and the matter was consequently set for hearing.
The specification
The subject matter of the present application relates to a system and method for undertaking market research, and more particularly for gathering market research from online communities or online panels.
It is known to undertake market research in an attempt to gain insights into the likely demand for specific goods and/or services amongst a target population, or the level of satisfaction of existing goods and/or services that have previously been purchased by that population. Due to the expense and logistics involved in obtaining research from the entire target population, it is more usual to research only a sample or subset of the target population. The specification variously refers to the sample population as a “community” or “panel”.
More recently, use has been made of online methods for collecting market research data from communities. While this medium offers some advantages, it has also been found to pose additional complexities particularly as the individuals that actually participate in the market research – that is, those individuals who collectively form the community - are not necessarily representative of the target population for the goods and/or services. A conventional approach to reducing skews is to make use of financial or other inducements. However, it is not clear what improvement, if any, this or other attempts to achieve representative feedback offers, particularly in an online environment. This in turn considerably limits the manufacturer’s or supplier’s ability to draw strong conclusions from the output of online market research. It also has the side-effect of encouraging the use of larger sample populations or longer sample periods, which makes the research more expensive and increasingly likely to alienate potential or actual research participants.
The invention primarily seeks to overcome or ameliorate at least some of the above drawbacks by providing an indication of the extent to which the online community is representative (or not) of the target population.
One embodiment of the invention is broadly said to provide a computer-implemented method for undertaking market research of a target population, the method including the steps of:
obtaining a first dataset relating to a community, the community having a plurality of members and being a subset of the population, wherein the first dataset collectively includes first demographic data for each member of the community;
using a microprocessor, comparing the first dataset with a demographic dataset, thereby to create a demographic profile for the community; and
using a microprocessor, comparing the demographic profile for the community with a demographic profile for the target population, thereby to generate data indicative of the representativeness of the community relative to the target population.
Another embodiment of the invention is broadly said to provide a machine for undertaking market research of a target population, the machine comprising:
a microprocessor coupled to a memory, wherein the microprocessor is programmed to:
access a first dataset relating to a community, the community having a plurality of members and being a subset of the target population, wherein the first dataset collectively includes first demographic data for each member of the community;
compare the first dataset with a demographic dataset, thereby to create a demographic profile for the community; and
compare the demographic profile for the community with a demographic profile for the target population, thereby to generate data indicative of the representativeness of the community relative to the target population.
The first demographic data preferably includes an age characteristic and a location characteristic for each member of the online community. Other member characteristics that can be selectively captured include socioeconomic status indicators and employment factors.
The demographic dataset is census data obtained from one or more government agencies or similar bodies and, as a consequence, is demographic data for the total population as a whole of a given state, country or other region.
The demographic dataset is processed via a computer network for tagging the first demographic data to develop a demographic profile for the online community. This profile is based upon segments, such as annual income, that are earlier identified to be of interest. The segments are typically expressed as a percentage of the total population.
The computer network is also responsive to the demographic dataset to develop a demographic profile for the target population. This profile is based upon the same preselected segments as the demographic profile for the online community, and again is able to be summarised or presented as percentages for each segment. That is, the profile for the target population provides an indication of the proportion of the online community that falls within the preselected segments, based upon calculations that make use of the age and location characteristics included within the first demographic data and the census data. A demographic profile for the general population may be similarly developed.
The demographic profile for the online community is compared with that of the target population by way of a statistical analysis. This allows for a quantification of any differences and/or similarities between the two profiles which, in turn, provides an indication of representativeness. That is, it indicates numerically the extent to which the online community is representative (or not) of the target population.
A comparison of the demographic profile for the online community with that of the general population is undertaken more typically to plan for large-scale state or national marketing campaigns such as that used by large corporations or government bodies.
The innovation patent
It is convenient to mention here that on 25 March 2010 the applicant was granted innovation patent 2010100225 (the innovation patent). The innovation patent records Katie Harris as the inventor.
While the innovation patent and the present application are essentially concerned with the same subject matter, the innovation patent is not covered by the present section 32 and 36 requests.
The evidence
Evidence in support filed by the applicant
The evidence upon which the applicant relies consists of a statutory declaration made by Katie Harris who, as mentioned earlier, is the person recorded as the inventor.
The Harris declaration is noticeably brief. It acknowledges Ms Harris’ involvement in late 2002 and early 2003 with a company known as Brand Evolution which engaged the services of the requestor for the purpose of conducting geo-demographic profiling. In May 2009, Ms Harris was party to a meeting with the requestor to discuss the possibility of again engaging his services, specifically to profile a department store’s loyalty card database for purposes of segmentation.
Ms Harris states that in the process of developing concepts related to the invention:
“I asked Mr Dommett about the possibility of using geo-demographic techniques such as his for the purpose of profiling online communities, thereby to better understand the practical viability of the invention.”
Ms Harris claims that the invention arose from an epiphany she had that geo-demographic profiling could find application in the context of online communities used for market research purposes, independent of any of her dealings with the requestor.
Evidence in support filed by the requestor
The evidence upon which the requestor initially relies consists of a statutory declaration made by him together with exhibits RDA-1 to RDA-17.
By way of background information, the requestor explains that geo-demographic systems have been in use in Australia since 1987 following their introduction in the US and UK in the late 1970’s as social analysis tools and for targeting direct marketing campaigns. One of the ways market research companies gain market information is by utilising “communities” of respondents or “research panels”. Communities are often comprised of a sample drawn from a customer database while research panels generally comprise members of the public. In marketing, geo-demographic segmentation is a multivariate statistical classification technique which generally uses census data to classify the consumers in a community. Determining which classification applies is apparently known in the market research industry as “tagging”.
A threshold problem in market research is the quality of the communities or panels as all are less than perfectly representative of the larger target population, which may be the general population or a subset of interest. One of the main applications of geo-demographic systems is determining the representativeness of research panel and community databases compared to the target population. The industry has developed standard approaches to adjusting for representativeness, principally by using quotas or weighting, or both.
In 1990, RDA Research (RDA), which is the trading name of Robert Dommett and Associates Pty Ltd, built its first geo-demographic system in Australia. The system is called “geoSmart” and segments the Australian population utilising national census demographic measures and modelled characteristics. RDA subsequently developed a number of other marketing products including geoTribes and easyTarget. All are the subject of registered trade marks.
The requestor states that in 2007 a Simon Harris from Brand Evolution downloaded an easyTarget sample report from the RDA website (RDA-12). The report presents the results of tagging an illustrative database with geoSmart groups and segments, and geoTribes segments, and then comparing them to the corresponding groups and segments from a random sample of the Australian population. The report also included measures of representativeness of the results.
On 23 September 2007, the requestor received an email from Mr Harris who was by then associated with the applicant. On 2 October 2007, the requestor sent Mr Harris a geoSmart profile by reply email.
In 2009, the requestor met with Simon and/or Katie Harris on a number of occasions during the period 7-28 May. According to the requestor:
“I explained RDA Research’s business and products to Katie and Simon Harris and explored retaining them in a sales capacity. Substantially the matters covered in these discussions were joint promotion of applications of the geoTribes segmentation scheme and easyTarget database profiling reports to existing clients of [the applicant]. We explored the option of [the applicant] reselling applications of these products partially under brands owned by [the applicant] …”
The requestor sent a follow up email to Simon and Katie Harris after their final meeting
(RDA-14). Attached to this email was an easyTarget report which included examples of tagging the sample and target populations and calculating representativeness between them (RDA-15), as well as information concerning the application of geoTribes segments for profiling online communities (RDA-17).
Evidence in response filed by the requestor
This evidence consists of another statutory declaration made by the requestor together with exhibit RDA-18. The requestor’s main point of contention is that the easyTarget report sent by him to Simon and Katie Harris in May 2009 had, before the present application was filed, demonstrated the practical viability of “the concepts related to the invention” referred to in Ms Harris’ evidence in support.
I will make further reference to the evidentiary material where necessary in this decision.
Relevant law
The law governing disputes over entitlement was recently considered by the Full Court of the
Federal Court of Australia in University of Western Australia v Gray [2009] FCAFC 116. The Court accepted that entitlement is assessed by considering three matters:
1)identify the “inventive concept” of the invention as defined in the claims;
2)determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
3)determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention
Mr O’Sullivan advised during the course of the hearing that the requestor sought only to establish his inventorship and did not assert entitlement. Nevertheless, the identity of the inventor remains at the centre of the present dispute and, as made clear in Gray (at [255]), the person who made the invention is to be ascertained by reference to the inventive concept.
The inventive concept
Although not articulated in this way, it is apparent from the submissions of both parties that the inventive concept was commonly viewed as residing in the more broadly described embodiments I have set out above.
Who was responsible for the inventive concept
Mr O’Sullivan went to some lengths to demonstrate that Ms Harris first learnt of the invention through information imparted to her by the requestor.
Mr O’Sullivan firstly noted that the requestor’s evidence had confirmed that the concepts of geo-demographic segmentation (or classification) and adjusting the weight of market research data represented common industry practice. This was not challenged by Mr Ward.
Mr O’Sullivan then turned attention to the activities of the requestor. The requestor is the principal of RDA which offers geo-demographic services to companies such as I-View, an online panel provider, to tag and profile their survey panels. A series of email communications between RDA and I-View during 2008 (RDA-10) identify several RDA products that were in use at that time, including easyTarget, and research segmentation frameworks such as geoSmart and geoTribes.
An easyTarget report was released to I-View in April 2008 (RDA-11). The report includes several tables which compare an I-View panel with the general population of Australia. A number of different discriminators are employed to segment the target (panel) population and the general population similarly in the tables, so each segment can be compared to the corresponding segment of the other population. The application of values associated with the discriminators results in their tagging. For example, on page 7 of the report each member of both populations has been tagged with an alphabetical category which represents a particular socioeconomic status and family orientation. Each segment of the tagged I-View panel is aligned with the corresponding segment of the tagged general population using one of RDA’s segmentation frameworks to generate various items of information including the percentages of each population in each segment and a “z-score” together with a graphical bar which provides a visual indication of the representativeness of the I-View panel for each segment. I note that the same information appears in Figures 6 and 7 of the present specification.
The implication here seems to be that the easyTarget report released to I-View in April 2008 discloses all elements of the inventive concept. Whatever the case may be, there is no evidence that Ms Harris or Simon Harris had knowledge of this report.
What the evidence does establish is that in 2007 Simon Harris downloaded an easyTarget sample report (RDA-12) which shows the results of tagging an illustrative database of overseas travellers with geoSmart groups and segments and geoTribes segments, and comparing them to the corresponding groups and segments of a random sample of the general population. The results on pages 5, 7 and 10 of the report respectively show how representative the illustrative database is compared to Australia as a whole when segmented into these various groups and segments.
The sample report is asserted by the requestor to read directly onto the inventive concept as particularly described in paragraphs [0074] to [0079] of the present specification with reference to Figures 5, 6 and 7. From an overall reading of the requestor’s evidence in support, the reasoning on which this assertion is grounded is that the sample report firstly discloses the step of obtaining data from a sample community (in this case, overseas travellers) which includes demographic data for each member of the community. This, it is argued, is the ubiquitous step of questioning the members of the community. The report additionally discloses the step of creating a demographic profile for the sample community using a demographic dataset which involves tagging the sample community. The report finally discloses the step of generating an indication of the representativeness of the sample community relative to a target population in terms of a number of measures, using the demographic profiles of the sample population and the target population.
I agree with this analysis, noting that although the sample report does not explain how profiling or tagging is undertaken, these actions as mentioned earlier simply reflect standard industry practice. The present specification appears to acknowledge as much at paragraph [0075].
The sample report concludes with some general information regarding RDA’s geo-demographic products and services, as well as general conditions of sale. Clause 6 of the general conditions of sale relates to confidentiality, but it is clear that any obligations arising under this clause do not apply to the contents of the sample report. In other words, the sample report was not disclosed to Mr Harris in confidence.

On 2 October 2007, the requestor forwarded a geoSmart profile to Mr Harris by reply email. The evidence does not indicate Mr Harris’ motive for contacting the requestor, but as events occurred the requestor variously met with Mr and Ms Harris a number of times during May 2009 to discuss the joint promotion of the geoTribes and easyTarget products to the applicant’s clients. Mr Harris was by then associated with the applicant.
The requestor sent a follow up email together with a number of attachments to Mr and Ms Harris after their last meeting on 28 May 2009. One of the attachments consisted of a sample easyTarget report which provides a comparison between luxury spenders and the general population of Australia. The methodology embodied in this report is said to have been invented by the requestor. The report bears many similarities to the sample report downloaded by Mr Harris in 2007 especially as regards its inclusion of examples of tagging the sample and target populations and calculating representativeness between them. The clear inference is that it likewise directly corresponds to the inventive concept. Another attachment (RDA-17) illustrates the application of geoTribes segments for profiling online communities.
In conclusion, Mr O’Sullivan submitted that the evidence confirmed that the alleged “epiphany” which forms the basis of Ms Harris’ claim to inventorship could only have come from information conveyed to her by the requestor either directly or through the agency of Mr Harris. Mr O’Sullivan said that what Ms Harris appears to be claiming is conception of the idea of applying geo-demographic techniques to online communities. However, the commercial viability of geo-demographic market research was known well before her alleged epiphany as evidenced by the respective sample RDA reports released to I-View in April 2008 and provided to Ms Harris in May 2009.
Mr O’Sullivan accordingly contended that the requestor, and not Ms Harris, is the person responsible for the inventive concept. For the reasons he has discussed, I consider Mr O’Sullivan’s contention to be well-founded.
Mr Ward did not dispute that the requestor had communicated the inventive concept to Ms Harris before the earliest priority date of the present application. Instead, Mr Ward relied on the fundamental principle that:
“an inventor of prior art does not have any entitlement to a third party’s patent application in respect of which that prior art is relevant”
and likewise that:
“a prior user of technology in Australia does not have any entitlement to a third party’s subsequent patent application that covers such technology. If a party decides to commercialise technology without first seeking patent protection, they should not be able to revive their ability to use the patent system simply because a third party subsequently seeks to patent similar technology.”
Mr Ward then highlighted the fact that the evidence filed by the requestor demonstrated that the geoSmart, geoTribes and easyTarget products, along with other technology developed by the requestor, had been commercially used in Australia as at April 2008, and that such technology embraced the inventive concept. Mr Ward submitted that the requestor had therefore, by his own account, established that the concept in respect of which he asserted inventorship was publicly disclosed by him, or at least by RDA with his consent, before the earliest priority date of the present application.
A delegate of the Commissioner was also faced with this somewhat unusual situation in Mining Equipment (Minquip) Pty Ltd v Mining Supplies Pty Ltd (1999) 45 IPR 566. As outlined by the delegate at 573:
“In the present case Minquip assert that Minsup themselves have publicly disclosed all the material, for which they are seeking entitlement, before the priority date of Minsup’s specifications. It would be inappropriate to make any declaration under s 36(1) … for subject matter that the party seeking the declaration … had made publicly available.”
The delegate found prior use by the section 36 requestor of the subject matter in question and that, as a result of that prior use, the requestor “had forfeited any right to a patent for an invention in respect of [that subject matter] and was not entitled to the invention disclosed”. The delegate noted that this was not to confuse the issue in dispute with invalidity.
Although the Minquip decision related to a request made under section 36, I agree with Mr Ward that the delegate’s findings apply equally to section 32. It is also of note that this decision concerned a claim to entitlement which is not pressed by the requestor in the present case. Nevertheless, I do not consider that this distinction is of any significance since in applying Minquip I fail to see how the requestor can sensibly allege inventorship in respect of subject matter which his own evidence confirms had become publicly available before the relevant date. Put another way, there is no subject matter for inventorship to subsist in.
I am therefore of the view that there is no matter for which I can make a finding of inventorship under section 32 or a declaration under section 36 in favour of the requestor.
Mr O’Sullivan responded to Mr Ward’s line of argument by suggesting that Ms Harris could conceivably have devised the inventive concept independently of the requestor. Mr O’Sullivan did not attempt to justify his sudden change in position which in any event I find to be far from convincing.
It is well settled in law that in these proceedings the requestor carries the legal burden of proof on the balance of probabilities. However, the evidential burden may shift from time to time, particularly where knowledge of the relevant facts lies peculiarly with one party or the other (Dunlop Holding Ltd’s Application [1979] RPC 523 at 542-4).
The upshot of Mr O’Sullivan’s counter-claim is to shift the evidential burden from the requestor to Ms Harris. The sum total of her evidence is that the inventive concept arose out of “an epiphany [I had] that geo-demographic profiling could find application in the context of online communities used for market research purposes”. There is no corroboration from any other person (notably Mr Harris) and no hard evidence which otherwise supports this bland assertion. Ms Harris’ evidence is even devoid of any inkling of relevant technical expertise, or the circumstances which provided the impetus for her alleged epiphany.
Consequently, I am not at all swayed by Mr O’Sullivan’s reversal of opinion, and it strikes me that he is in effect asking that the requestor’s evidence be set aside which is the very material on which Mr O’Sullivan initially relied to attribute inventorship to the requestor and which for the reasons discussed in this decision I have found to be most compelling.
As a final point I note that the applicant filed their provisional applications relating to the inventive concept within a few months of Ms Harris’s dealings with the requestor in May 2009. To my mind the overall weight of the requestor’s evidence, which Mr Ward for the applicant has apparently accepted at face value, as compared to the lack of detailed evidence from Ms Harris, places the timing of the provisional applications well outside the realms of mere coincidence.
Subsequent transfer of rights
There is no evidence of any transfer of rights from the requestor to Ms Harris or the applicant, and in any event this issue is a nullity as I have found that the requestor has forfeited any right to inventorship.
Conclusion
The central issue in this dispute is the identity of the inventor. The requestor has established that the inventive concept was developed by him. However, the evidence substantiates that the subject matter embodied by the inventive concept was publicly disclosed before the earliest priority date of the present application by or with the consent of the requestor who, as a consequence, has forfeited any right to inventorship.
Accordingly, it is inappropriate to make any determination under section 32 or any declaration under section 36 in his favour.
Costs
It is normal in proceedings before the Commissioner for costs to follow the event. In the present case the requestor has successfully shown that he is the true inventor, but in so doing has been unsuccessful in securing the relief available under sections 32 and 36.
In these circumstances I think it appropriate for each party to bear their own costs. I therefore make no award of costs.
O L Haggar
Delegate of the Commissioner of Patents