Sarb Management Group Pty Ltd v Vehicle Monitoring Systems Pty Ltd - [2015] APO 69

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
SARB Management Group Pty Ltd v Vehicle Monitoring Systems Pty Ltd [2015] APO 69

Patent Application: 2011204924

Title:Method, Apparatus and System for Parking Overstay Detection

Patent Applicant:  Vehicle Monitoring Systems Pty Ltd
Opponent:  SARB Management Group Pty Ltd
Delegate:  Matt Kraefft
Decision Date:  28 October 2015
Hearing Date:  18 August 2015, in Canberra

Catchwords: PATENTS – section 59 – opposition to grant of a patent – divisional application – priority date – earliest claimed priority date valid – novelty – claims found to be novel – inventive step – person skilled in the art could be reasonably expected to have ascertained the patent documents relied upon – obviousness not established in light of patent documents – claims fairly based – opposition unsuccessful

Representation: Patent applicant: Mr Chris Burgess, of counsel, instructed by Mr John Brass, patent attorney, Spruson & Ferguson.
Opponent:Ms Helen Rofe, of counsel, instructed by Mr Will Monks, patent attorney, Monks IP.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011204924

Title:Method, Apparatus and System for Parking Overstay Detection

Patent Applicant: Vehicle Monitoring Systems Pty Ltd
Date of Decision: 28 October 2015
DECISION
The opposition fails on all grounds raised in this opposition.
Subject to appeal, I direct the application proceed to grant.
REASONS FOR DECISION
BACKGROUND

Vehicle Monitoring Systems Pty Ltd (“the applicant”) filed patent application 2011204924 on 21 July 2011. The application is a divisional application of 2008200089 (“parent application”) which in turn is a divisional application of 2005243110 (“grandparent application”). The latter application is based on a provisional application, 2004902622. The present application, 2011204924, has an earliest claimed priority date of 17 May 2004. Application 2011204924 was advertised accepted on 29 August 2013.
SARB Management Group Pty Ltd (“the opponent”) filed a notice of opposition on 29 November 2013. A statement of grounds and particulars followed on 28 February 2014. The opponent subsequently requested amendment of the statement of grounds and particulars. That request was allowed on 26 September 2014. The amendment was to remove three listed documents from the particulars.
The parties completed the evidentiary stages on 14 November 2014.
SPECIFICATION
The Vehicle Monitoring Systems Pty Limited v Sarb Management Group Pty Ltd (No. 2) decision, [2013] FCA 395, (“the VMS decision”), is in respect to a related innovation patent 2010101354. Paragraphs [10] to [13] of that decision summarise the background to the invention as well as the description of the invention as disclosed in the complete specification of that innovation patent. That invention is disclosed in substantially the same terms as in the present application. I propose not to repeat a summary of the specification of the present application here.
The present specification ends with 29 claims. The independent claims are claims 1, 10 and 25-28. These claims read as follows.
1.A method for identifying vehicles that overstay a parking time limit associated with a parking space, said method comprising the steps of:
detecting presence of a vehicle in said parking space using a battery-powered apparatus encased in a self-contained, sealed housing;
processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space;
determining from said stored data by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed said parking time limit associated with said parking space;
detecting presence of a data collection apparatus within wireless communication range of said detection apparatus; and
when presence of said data collection apparatus is detected, wirelessly transmitting from said battery-powered apparatus encased in a self-contained, sealed housing, data relating to an identified instance of said vehicle overstaying said parking time limit associated with said parking space.
10.A battery-powered apparatus for identifying vehicles that overstay a parking time limit associated with a parking space, said apparatus comprising:
a detector adapted to detect presence of a vehicle in said parking space;
a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a parking time limit associated with said parking space;
a radio receiver coupled to said processor for receiving radio signals from a data collection apparatus; and
a radio transmitter coupled to said processor for transmitting data relating to identified instances of said vehicles overstaying said parking time limit associated with said parking space;
wherein said battery powered apparatus is encased in a self-contained, sealed housing.
25.A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of:
detecting presence of a vehicle in said parking space using a battery-powered apparatus encased in a self-contained, sealed housing;
processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space;
determining from said stored data, by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and
wirelessly transmitting, from said battery-powered apparatus encased in a self-contained, sealed housing, data relating to an identified instance of overstay of said vehicle in said parking space.
26.An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising:
a detector adapted to detect presence of a vehicle in the parking space;
a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a defined time duration in said parking space;
a radio receiver coupled to said processor for receiving wake-up signals;
a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and
a battery for providing power to said detector, processor, radio receiver, and radio transmitter;
wherein said apparatus is encased in a self-contained, sealed housing.
27.A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of:
detecting presence of a vehicle in said parking space using a battery-powered apparatus;
processing and storing, in said battery-powered apparatus, data relating to presence of said vehicle in said parking space;
determining from said stored data, by said battery-powered apparatus and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and
wirelessly transmitting, from said battery-powered apparatus, data relating to an identified instance of overstay of said vehicle in said parking space.
28.An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising:
a detector adapted to detect presence of a vehicle in the parking space;
a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a defined time duration in said parking space;
a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and
a battery for providing power to said detector, processor, and radio transmitter.
The above claims 25-28 are the same as claims 1-4, respectively, of the above-mentioned innovation patent 2010101354. The innovation patent is now expired. Moreover, independent claims 1 and 10 are of narrower scope than claims 25-28. Consequently I informed the parties at the hearing that I regarded the VMS decision as highly persuasive. In particular, I invited the opponent to focus on the substantive differences, if any, between the innovation patent case and the present case as to why I should make a different decision to that of Yates J in the VMS decision.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent’s grounds of opposition were that the alleged invention was not novel and did not involve an inventive step, and that the claims were not fairly based on the matter described in the specification. The opponent provided several particulars relating to these grounds.
EVIDENCE IN SUPPORT
The opponent filed evidence in support in the form of two declarations from Mr Thomas Stamp and a single declaration from Mr William Monks. Mr Stamp has extensive experience in electronics and communications engineering since at least 1993 in a variety of practical fields such as medical devices and then red light traffic violation detection systems. He has provided comment on the state of the art before the priority date, a claims comparison against several items of prior art, and commented on the importance of the use of wake-up signals in the invention in each of the parent, grandparent and provisional applications. Mr Monks is the patent attorney representing the opponent and has exhibited several documents of alleged prior art.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from Mr Jason Pieloor, Mr Larry Schneider, Mr Tom Gladwin, Mr Tony Spirovski and Mr John Brass. The first four declarants all have significant computer systems engineering, electronic engineering and/or parking management systems experience. They have principally commented on the state of the art before the priority date. Mr Spirovski has additionally commented on the wake-up signals and made a claims comparison against the prior art cited by the opponent. Mr Brass is the patent attorney representing the applicant and has exhibited a copy of the above-mentioned Federal Court decision and of the grandparent application.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Mr Stamp, Mr Gordon Urquhart and Mr Graham McKinnon. In the main, Mr Stamp has maintained his position as outlined in his evidence in support. Mr Urquhart and Mr McKinnon have extensive experience in the field of parking enforcement and have commented on the state of the art before the priority date.
APPLICABLE LAW
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 (“the Amendment Act”), there are substantial changes to the Patents Act 1990. The date of effect of those changes was 15 April 2013. The application of the Amendment Act in the present case depends on the date of the request for examination. The applicant filed its request for examination on 2 February 2012. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 18 of the Patents Act relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
(c) is useful; and ………
PRIORITY DATE
Subsection 43(2) of the Patents Act at the relevant time provided that the priority date of a claim is either the filing date of the specification or a date otherwise determined by the Patent Regulations. Sub-regulations 3.12(1)(c) and 3.12(2C) relevantly provided that a claim of a divisional application, if fairly based on matter disclosed in the parent application, would take the priority date that the claim would have had if it had been included in the parent application.
The opponent contended that the claims in the present application which did not require the use of wake-up signals were not fairly based on the parent, grandparent or provisional applications, and were therefore not entitled to claim earlier priority dates from any of those applications. There is no specific definition of the expression “wake-up signals” in the specification. In their broadest sense, wake-up signals may be deemed to simply initiate a communication session between two or more devices. Mr Stamp mentioned a common communication initiation process, even well before the earliest priority date, in the information and communication technology (“ICT”) sectors of “handshaking” between devices. The latter expression is generally understood to not only mean the establishment of a connection between devices but also the establishment of communication parameters acceptable to both devices, such as agreed information transfer rate, coding, parity or interrupt procedures, before data transfer begins. From a reading of the specification as a whole, Yates J noted in the VMS decision, at [72], that the wake-up signals described therein were sent by radio frequency transmission to, and received by, a detection apparatus. In this sense, the detection apparatus would be “woken up” by another device when the latter was within communication range. This would prompt the detection apparatus to transmit data to the other device, for example overstay data. At [127] to [134] of the VMS decision, Yates J reasoned that the earlier patent specifications contained sufficient discussion and examples that the use of wake-up signals was not mandatory, particularly where the other device was a fixed device and not a portable or mobile device, for example as illustrated by the embodiments of Figures 6 and 7. Yates J concluded that each of the claims in that case was entitled to the earliest claimed priority date.
The opponent stated that a significant difference between the contents of the innovation patent specification and the present specification was that the latter omitted a paragraph found in the innovation patent specification as to the optional use of wake-up signals. On this basis, the opponent indicated that I was not bound by Yates J’s decision as to fair basis. That paragraph appears on page 14 at lines 12-16 of the innovation patent specification. It also appears on page 3 of each of the parent, grandparent and provisional specifications. The paragraph is recited below.
“Repeated wireless wake-up of a detection apparatus may be performed irregularly with respect to time depending on the presence of a data collection device. Wireless retrieval of data may be performed in response to wireless wake-up of a detection apparatus. Overstay of a vehicle in a parking space may be determined at the detection apparatus by processing data received from the detector.”
At [39] of the VMS decision, Yates J also quoted the first two sentences of the above paragraph and stated at [40] that this passage was one of two passages that made it clear that, amongst other things, the described methods, apparatuses and systems can be, but are not required to be, practiced using wake-up signals transmitted to the detection apparatuses. The absence of this passage from the present specification may give some support to the opponent’s position that the use of wake-up signals was mandatory. On the other hand, paragraph [130] of the VMS decision listed several further occurrences in the Detailed Description section of the parent specification which disclose embodiments in which the detection apparatus is not required to operate in response to the receipt of a wake-up signal. These occurrences also find corresponding expression in the grandparent and provisional specifications. On this basis it would appear that the absence of the above-quoted paragraph from the present specification does not materially affect the overall disclosure that the use of wake-up signals is optional. The fact that this paragraph is found in each of the parent, grandparent and provisional specifications would appear to further weaken the opponent’s objection to the claimed priority dates.
I conclude that each of the claims of the present specification is fairly based on matter disclosed in each of the parent, grandparent and provisional specifications. The claims are therefore entitled to the earliest priority date of 17 May 2004.
Consequently several documents of alleged prior art cited by the opponent fall away in this case. I will only deal with the documents published before the earliest priority date.
NOVELTY
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, at [302], the full Federal Court held:
“Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure – which involves a determination about whether a prior document has “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” or, perhaps, something less – that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step”.
The above position does not appear to have been disturbed by the High Court on appeal. See AstraZeneca AB v Apotex Pty Ltd, [2015] HCA 30.

The opponent principally relied on the following documents published before the earliest priority date.
US 2002/0109611 (“Howard”) – Published 15/08/2002
Howard was extensively discussed in the VMS decision. Applying the passage in that decision at [162] to the present case, an essential feature of the claims of the present application is the use of a single, battery-powered apparatus that carries out the steps of detecting the presence of a vehicle in a parking space; processing and storing data relating to that presence; determining from the stored data whether the vehicle has overstayed a defined time duration in the parking space; and wirelessly transmitting data related to that overstay. At the hearing, the applicant similarly noted these aspects as the essential features of all the claims of the present application.
At [164] of the VMS decision, Yates J mentioned that Howard makes clear that it is the central server in that document, not the sensor or vehicle detector, that determines from the processed information whether there has been vehicle overstay. There was further argument in that case of certain embodiments where the central server could reside in a common housing with the sensor. Howard disclosed this at [0060] in the context of a distributed parking information system (Figure 14) involving a number of sensors communicating with base stations and then on to the central server, while other sensors were in communication with the central server through a sequential communication chain across the sensors. However there was no clear disclosure of how the server and any sensor might be housed in a common housing in that particular system. In any case, the sensors and the server retained their separate identities and functions within that system. The conclusion in the VMS decision at [175] was that Howard did not disclose the single apparatus or method steps of the claims in that case. I have insufficient reason to come to a different conclusion in the present case.
I conclude the present claims are novel over Howard.
JP 3-194010 (“Tetsuya”) – Published 23/08/1991 - Translation by Academy Translations
Like Howard, Tetsuya was extensively discussed in the VMS decision. At [193] of that decision, Yates J indicated that Tetsuya makes clear that the disclosed device and methods pertain to vehicles that are stationary in areas where parking is prohibited, not time-limited. In that context, a count is commenced once a stationary state of a vehicle is detected. When the count reaches a pre-determined limit, that is a pre-set number of counts, this fact is registered and sent from the count management means to the wireless communication means which then relays this fact to a base station, which may be a police station. The count management means is exemplified as a counter and decoder.
In terms of the claimed invention, the VMS decision contained some discussion around the meaning of the terms “process” and “processor” as ascribed to the claims in that case, and whether a counter and decoder could constitute a processor. The conclusion, at [205], was that Tetsuya communicates the presence of an illegally parked vehicle upon the counter reaching a predetermined number of counts. It does not in any real sense operate by processing and storing data from which it then determines whether a vehicle has overstayed a defined time duration. I have insufficient reason to come to a different conclusion in the present case.
I conclude the present claims are novel over Tetsuya.
DE 10036111 (“Fuchs”) - Published 20/09/2001 - Translation by Academy Translations
This document was not pursued in the VMS decision. Fuchs discloses a wireless communications system between a parking space monitoring apparatus and users such that users may know, via mobile phone for example, the availability status of a parking space, or the elapsed parking time, and applicable parking rates and fees. A sensing device, or vehicle detector, determines the occupancy status of a parking space. There is also discussion in Fuchs about a maximum parking time. When a specified maximum parking duration is exceeded, the apparatus can be switched into a special rate mode. Both the maximum parking duration and the special rate may also be communicated to users. The special rate is where a higher parking fee rate applies.
The opponent submitted the transmission of the special rate operating mode and elapsed parking time was a transmission of overstay data. It is correct that the user may query the system and be shown on a display the desired data. In this way, the user may be informed of the elapsed parking time and if the apparatus has switched to the special rate mode. One could then suggest therefore that, indirectly, an indication of the exceeding of the maximum parking duration has been transmitted. In this sense, I conclude the system determines overstay and transmits overstay data. On the latter point, I would note that the broadest claims of the application, for example claims 27 and 28, have no definition of the destination of the wireless transmission, such as to a data collection apparatus as in claim 1.
On the other hand, the Fuchs document does not explicitly disclose where data processing and data storage functions are performed for determining vehicle overstay. The claims of the application define these functions being performed locally by a battery-powered apparatus wherein the sensor or detector also resides.
The opponent acknowledged that Fuchs also does not disclose how the apparatus is housed or powered. From the evidence though, the opponent noted that Mr Stamp would have understood at the earliest priority date that the apparatus could and should have been battery powered. Moreover the opponent stated that Mr Stamp also considered that the system is likely to be self-contained and sealed.
The above statements would appear to be significantly short of the required standard to establish lack of novelty. Statements that the apparatus “could” or “should” have been battery powered and “likely to be” self-contained may be contrasted with the statements, "contain clear and unmistakeable directions to do what the patentee claims to have invented" (General Tire) and “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” (AstraZeneca). There is insufficient disclosure in Fuchs of the use of a battery-powered apparatus that carries out the steps of detecting the presence of a vehicle in a parking space, processing and storing data relating to that presence, determining from the stored data whether the vehicle has overstayed a defined time duration in the parking space, and wirelessly transmitting data related to that overstay.
There was some discussion in the evidence and submissions of a free mode in the disclosure in Fuchs, particularly referencing page 2 of the document. The suggestion by the opponent was that this disclosed a period where free parking was allowed before any parking or overstay fees applied and thus Fuchs disclosed a system where overstay was determined independently of any parking payment system as claimed in the present application.
It is correct that the second paragraph on page 2 of Fuchs clearly describes two modes of operation, namely a free mode and a parking mode. On the other hand, that paragraph describes parking time monitoring apparatus, for example in the form of a parking meter, as having the two modes of operation. Further in the second paragraph, the background to the invention describes an apparatus that must be switched from free mode to parking mode by means of an activation signal such as the insertion of coins. After the activation signal is received, the parking space is released. The background also describes known apparatus in the third paragraph requiring the driver or a passenger to leave the vehicle to activate the parking meter that is assigned to the free parking space. The fourth paragraph on page 4 describes the presence of a deactivation signal, from a user device or a sensor device, switching the apparatus from parking mode to a free mode if the user abandons the parking space by departing.
These statements do not appear to describe a context where free mode means no charge for parking. Rather the context of free mode in Fuchs seems to be the availability of a parking space, that being where the space is unoccupied or unreserved. In support of this premise I would note that Fuchs describes parking meters, i.e. fee collection devices, operating in either the free or parking mode. Consequently the gist of Fuchs is of managing a paid parking system. I think Fuchs does not disclose a system that determines overstay independently of any parking payment system as claimed in the present case.
I conclude the present claims are novel over Fuchs.
INVENTIVE STEP
As mentioned earlier, the VMS decision was in respect to an innovation patent. The applicable test in such cases is that there must be an innovative step. The test for inventive step is different to that for an innovative step (Delnorth Pty Ltd v Commissioner of Patents, [2013] FCA 165). Consequently the VMS decision does not greatly assist in regard to inventive step in the present case.
Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (Subsection 7(3) at the relevant time).
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12 at [45], 148 CLR 262 at 286, Aickin J stated:
"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."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
In the Full Federal Court’s AstraZeneca decision at [202] and [203], the court found that if a problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is part of the prior art information (Subsection 7(3)), then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. On the other hand, if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole. Again, the High Court’s AstraZeneca decision did not appear to disturb this position.
Person Skilled in the Art
At [61] and [62] of the VMS decision, Yates J described the person skilled in the art in that case as one who possessed the general skills of an electrical engineer with working knowledge of the operation of sensing devices of the kind broadly described in the specification, and of radio frequency (“RF”) communication and communication devices involving the transmission of data. Such a person would also have been conversant with the use of devices for the processing and storage of data to be communicated by RF transmission. Yates J further stated that, as the person skilled in the art is an hypothetical construct, the relevant person, for present purposes, may possess an amalgam of attributes drawn from those practising in what may otherwise be disparate areas of specialist practice in electrical engineering. In this sense, the person skilled in the art may be conceptualised as a “team” of participants who direct their individual skills and knowledge to the field of endeavour marked out in the complete specification, in this case being the detection of vehicles that overstay a defined time interval in parking spaces.
Both parties in the present case appeared to broadly accept the above description as to the appropriate person skilled in the art in this case.
The opponent’s Mr Urquhart and Mr McKinnon both had extensive experience in parking enforcement before the priority date of the application. Similarly the applicant’s Mr Gladwin and Mr Schneider had extensive experience in parking enforcement or parking management before the priority date. The remaining declarants are somewhat on the periphery. The opponent’s Mr Stamp had relevant experience in electronics and communications engineering including RF systems, satellite laser ranging, and imaging systems in the medical field. In the month before the priority date Mr Stamp began working as a hardware manager for a company that developed red light camera systems for detecting traffic violations and issuing tickets for such violations. The applicant’s Mr Pieloor had computer systems and software engineering experience specialising in solutions for embedded platforms, that being purpose-built hardware and customised software. While he has not worked in parking enforcement or parking management, Mr Pieloor’s evidence was broadly focused on problem/solution approaches applied in engineering generally, in line with client needs. The applicant’s Mr Spirovski had relevant experience in electrical and electronics engineering including RF technology. In the year of the priority date, Mr Spirovski developed a low power coded RF transceiver system for proximity detection of vehicles and personnel for the purpose of collision avoidance.
Mr Stamp, Mr Pieloor and Mr Spirovski may be somewhat removed from the field of parking enforcement and management. On the other hand, their experience nonetheless had been relevantly in fields of electrical, electronics, systems and/or communications engineering such that they may each be considered to make up the “team” of participants directing their individual skills and knowledge to the field of endeavour relating to the detection of vehicle overstay. I conclude the evidence of all declarants in this opposition may be considered relevant although that of Mr Urquhart, Mr McKinnon, Mr Gladwin and Mr Schneider should be given more weight.
Common General Knowledge
The opponent indicated that its declarants, Mr Urquhart and Mr McKinnon, and the applicant’s declarants, Mr Schneider and Mr Gladwin, were all persons with a working knowledge of parking technology and, more broadly, the enforcement of local parking laws. The opponent relied on their evidence to submit that the following was common general knowledge at the earliest priority date.
It was difficult to prove and enforce parking infringement using the long-known chalking method. The chalking method was also very inefficient requiring extensive human resources for minimal successful parking infringement action against infringers. Thus, several technological solutions were being considered at the time which could prove the presence of a vehicle in a parking space, for example image capture systems. On the other hand, since parking management in the main was the responsibility of local councils with limited budgets, technology solutions needed to be cheap and simple. The alternative was paid parking systems where parking limit enforcement and revenue collection were effected by manual, or remote wireless, inspection of parking meters, or by parking voucher systems in car parks operated by councils or by private operators. However it was also commonly regarded in the field that paid parking systems were inappropriate in some areas, such as commercial zones or near hospitals for example, where free parking was deemed appropriate. In such zones, it was thus considered that chalking remained a “necessary evil”.
The discussion in the Background section of the present specification may also be broadly seen amongst the above themes. However the applicant countered the opponent’s submissions that this section of the specification described the common general knowledge. While the applicant’s position may in general be correct in terms of the caution to be exercised in proceeding on the basis of the inventor’s “starting point” (AstraZeneca), it is noteworthy that the applicant’s declarants, Mr Schneider and Mr Gladwin, have both commented on the inefficiencies of the chalking method and that there was interest, at the relevant time, in technological solutions which could enforce parking time limits in unpaid zones. However while solutions existed to monitor and enforce paid parking time limits, none of the above declarants from either side appeared to present evidence of suitable and cost-effective technological solutions in the field, at the relevant time, for monitoring and enforcing limits in free or unpaid parking zones.
In the main, I accept the above enunciation of the common general knowledge by the opponent.
Whether There is an Inventive Step
Common General Knowledge Alone
From the aspects of common general knowledge that I have accepted above in this case, it would be clear that there was no technological solution amongst the common general knowledge at the relevant time that would come close to the solution claimed in any of the present claims. Consequently the claimed invention has an inventive step in the light of the common general knowledge alone.
Exhibit TS3
The opponent further relied on a report by Mr Stamp, exhibit TS3 to Mr Stamp’s first declaration, to submit the claimed invention lacked an inventive step. Mr Stamp presented evidence that if he were briefed with the statement of the problem set out in the patent application at the priority date, and asked to solve the problem, he would have designed a technology system that solved the problem. The opponent indicated that, at its broadest level, Mr Stamp’s solution would use a sensor to detect the presence or absence of a vehicle in a parking space, knowledge of the time of day such that arrival and departure of a vehicle in a particular space can be tied to a particular time of day, and a method of notifying a parking officer. In his report Mr Stamp discussed four architectures. The opponent’s contention was that each of these solutions fell within at least claims 10, 25, 27 and 28 of the present application since none of these claims require the overstay data to be sent to a portable data collection apparatus. Mr Stamp’s preferred solution was a system where parking space sensors are wirelessly connected to each other in a “daisy chain” and there is no local site controller. Potential violations are determined within the sensor chain network itself and communicated directly to a parking officer in the field. Mr Stamp’s evidence was that his preferred solution had all of the features of most claims of the application.

There appear to be several difficulties with the application of Mr Stamp’s report to the issue of inventive step. Firstly the opponent has not established that the information relied upon by Mr Stamp was part of the common general knowledge at the relevant time. Mr Stamp’s architectures all rely on sensor technologies at their core. On the other hand, the applicant’s Mr Pieloor at [27] and Mr Schneider at [28] and Mr Gladwin at [27] all expressed reservation or unawareness in their evidence that sensor technologies would, or even could, have been used in parking enforcement before the priority date. Moreover the applicant submitted that Mr Stamp stated that the power for the sensors in his solution would be derived from an inbuilt solar cell that charges an internal battery in the sensor or a power cable that is laid along the parking spaces (buried in the road surface) that charges the battery in the sensor via inductive coupling. Battery charging arrangements were not included in Mr Stamp’s list, on page 22 of his report, of asserted available technology at the priority date in May 2004. The opponent has also presented no evidence that inbuilt solar cells or inductive coupling for charging sensor batteries was common general knowledge in the field at that time. Mr Stamp also referenced web sites, on page 5 of his report, that indicated the types of mobile phones available in 2004 where lithium-ion polymer batteries were widely used (page 22), which he stated at page 19 had suitable energy density for the present application. Again this technology and its application has not been established to have been common general knowledge in the present field at that time.
Secondly Mr Stamp’s report is a detailed and considered analysis of a range of architectures and the individual merits of those to solve the problem presented to Mr Stamp from the present specification. This approach appears to have arisen from the original question put to Mr Stamp. That question is put on page 6 of his report and asks whether, in the light of the background in the patent specification and his own background knowledge in May 2004, Mr Stamp could think of a solution (my emphasis) that would overcome or at least ameliorate the disadvantages discussed in the specification. This question may be contrasted with one of the requirements to establish obviousness, as mentioned above, of whether the person skilled in the art would directly have been led (my emphasis) as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In a similar vein, Mr Stamp presents the architectures as solutions that “can be envisaged” (page 4 of his report, second paragraph), rather than something the person skilled in the art would have been directly led as a matter of course to try. Moreover, throughout Mr Stamp’s report, several developmental options are also discussed. One example is the last paragraph on page 19 which describes the possibility (my emphasis) of conceiving a chain of sensors where the parking officer can hook into the sensor network instead of having a site controller that all the sensors report to. This development in turn follows from a preceding development in the preceding paragraphs of wireless communication of parking violations from the site controller to the parking officer. Such analysis and discussion would appear to be apposite to the requirement that the person skilled in the art would have been directly led as a matter of course to try a particular solution, let alone the particular claimed invention.
I conclude that it is improper to rely on exhibit TS3 to challenge the inventiveness of the claimed invention in this case.
Inventive Step in Light of Prior Art Documents
Whether Ascertained, Understood and Regarded as Relevant
At the relevant time, subsection 7(3) restricted prior art information used to support lack of inventive step to that which the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant.
Mr Urquhart at [10] and [11] mentioned his attendance at conferences and his regular review of publications in the field of parking to procure information on products, services and technologies in that field. Mr McKinnon at [13] mentioned his frequent review of commercial literature provided by parking technology providers.
At [13] of his first declaration, Mr Stamp stated that, when posed with a problem to solve, he would typically undertake a literature review of design articles in trade publications as well as search the Internet for relevant articles. Mr Stamp further stated that Internet searching had become his dominant method since about 1998. The opponent contended that, if provided with the statement of the problem set out in the patent application, and having undertaken the Internet search, Mr Stamp would have found Howard, Tetsuya and Fuchs.
The issue of whether a skilled person could be reasonably expected to have ascertained particular patent documents came up in the Delnorth case. In that case, there was some evidence that a particular witness undertook patent searches. However the evidence of that witness made no reference to the patent documents relied upon. Even if they were known to the witness, they did not appear to have been perceived by him as relevant. In fact, neither of the documents was advanced as relevant until after the hearing at which the witness gave his evidence had concluded. In any case, at [53], Nicholas J noted the evidence was vague as to the nature of the patent searches undertaken by the witness or on behalf of his company, and the circumstances in which they were undertaken. In particular, the evidence said nothing about the scope of such searches including how they were targeted or how far back in time they extended. The documents relied upon pre-dated the priority date by more than 35 years. At [55], Nicholas J concluded the evidence did not show that the documents relied upon were patent specifications which the skilled addressee might be reasonably expected to have ascertained, understood and regarded as relevant to the problem addressed by the patent.
The Lockwood decision, at [132], affirmed the position that “ascertained” simply means discovered or found out. In the present case, Mr Stamp reviewed the literature and searched the Internet, and Mr Urquhart regularly reviewed publications in the field. The present field relates to the electrical or electronics engineering disciplines and particularly the operation of sensing devices and of RF communication involving data transmission. In such field, it is conceivable that the person skilled in the art could have appreciated the value of patents. Moreover it is also easily conceivable that patented technologies and/or patent documents could have been found in the literature and in the Internet search results by the person skilled in this art. The patent documents relied upon in this case are also in relatively closer proximity to the priority date of the present application. Moreover I regard there to be minimal impediment to ascertainment in respect to the language of the documents. One is in English and from a major industrialised country. The other two are also from major industrialised countries and English language abstracts were available in any case. Having found the documents, I have no doubt the person skilled in this art would have understood them and regarded them as relevant.
I conclude the person skilled in the art could be reasonably expected to have ascertained, understood and regarded the Howard, Tetsuya and Fuchs documents as relevant.
Howard
The principal difference between the claimed invention and Howard is that, in the latter document, it is the central server, not the sensor or vehicle detector, that determines from the processed information whether there has been vehicle overstay. Howard clearly relates to a centralised architecture that determines vehicle overstay in contrast to the claimed decentralised architecture that makes such a determination in the present case. While it may be enticing to regard such a difference to have been trivial or obvious at the relevant time, particularly in light of long-established decentralised systems architectures in many fields over many years before the priority date, this approach would reflect the type of ex post facto analysis the courts have often warned against. See for example Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd, (1980) 144 CLR 253. In the present case, there is insufficient evidence before me that the person skilled in the art, at the relevant time, would have been directly led as a matter of course from the Howard document to try the decentralised approach, that is the use of the sensor or vehicle detector, for determining overstay of a vehicle.
I conclude the present claims have an inventive step over Howard.
Tetsuya
At [230] of the VMS decision, in respect to an innovative step in that case, Yates J accepted that determining vehicle overstay in a parking space of defined time duration, rather than to identifying illegal parking in a prohibited area, made no substantial contribution to the working of the invention when regard was also had to the Tetsuya disclosure of a vehicle that had been stationary, and hence parked illegally, for 30 minutes before the fact of its illegal status was transmitted. For a similar reason, the claimed invention could not be said to have an inventive step over the Tetsuya document on this particular point. However there are other differences between the claimed invention and the Tetsuya document. As mentioned earlier, Tetsuya discloses the initiation of a counter when illegal parking is detected. When the count reaches a pre-set number of counts, this fact is registered and relayed to a base station to indicate the status of illegal parking in a parking space. In the broadest form of the presently claimed invention, vehicle presence is sensed or detected, data in respect thereto is processed and stored in the same apparatus to determine whether vehicle overstay has occurred, and instances of overstay are wirelessly transmitted. On the available evidence in this case, it is difficult to envisage that a person skilled in the art at the relevant time would have been directly led as a matter of course from a simple and relatively inflexible counter and decoder in the case of Tetsuya to the provision of a data processing and storing means in a single apparatus with its inherently more flexible mode of operation to determine vehicle overstay over a defined time duration.
I conclude the present claims have an inventive step over Tetsuya.
Fuchs
Earlier I noted three principal differences between Fuchs and the claimed invention in its broadest form. Firstly there is no disclosure in Fuchs of where data processing and data storage functions are performed for determining vehicle overstay. The functions may be performed locally in the same parking monitoring apparatus 10 where the vehicle sensing function is performed by sensor device 13. Alternatively data processing and storage may be performed externally and, for example, be centralised. In a further alternative, the system in Fuchs may be less sophisticated, for example merely relying on a counter associated with the time determination device 12 and sensor 13. Such variations in how vehicle overstay of the maximum parking duration may be determined in Fuchs make it difficult to find that the claimed variant, essentially the first alternative, was the one the person skilled in the art would have been directly led from Fuchs as a matter of course to try.
Secondly there is insufficient disclosure in Fuchs of the use of a battery-powered apparatus that carries out the claimed steps of detecting vehicle presence in a space, processing and storing data relating to that presence, determining therefrom whether the vehicle has overstayed, and wirelessly transmitting data related to that overstay.
The core of the disclosure of Fuchs is in the parking monitoring apparatus 10. Pages 6 and 7 of the translation of Fuchs describe item 10 in the drawing as an apparatus for monitoring parking time over a parking space featuring a time determination device 12, for example a clock, an occupancy sensor 13 and wireless receivers and transmitter. In this way a user may interrogate the apparatus 10, either directly with a transmission device 32 provided by the operator of the parking facility, or by mobile phone, to receive status information about the parking space. The determination of overstay will initiate switching to the special rate mode, and the occurrence of overstay may be transmitted to the user. The external operating unit 20 is principally a telecommunications entity, for a mobile phone user, and cashless payment settlement point. The sixth full paragraph on page 6 of the translation clearly states the external operating unit is not part of the parking monitoring apparatus.
In that context, at least one of the receivers and the transmitter of apparatus 10 constitute a telephone facility 19 enabling mobile phone communication through the external operating unit 20 with a user. While the apparatus 10 may be a local device, its operational features appear to be make it a significant extension of the previously known parking meter type of parking monitoring apparatus discussed as background art in Fuchs. In the absence of direct evidence on the point, it would appear the incorporation of battery power in such an operationally extended and relatively complex apparatus would not have been a matter of course to try at the relevant time.
Thirdly Fuchs does not disclose a system that determines overstay of a vehicle independently of any parking payment system as in the present claims. Fuchs describes the advantage of the invention in that case as enabling users to interrogate the parking monitoring apparatus related to a parking space without having to leave the vehicle to attend to the apparatus. The status of a parking space, the activation of release of a space, the elapsed parking time, the maximum parking duration, applicable parking fees and settlement may be determined and performed wirelessly, for example by mobile phone. From this and the above description of Fuchs, it would be apparent that Fuchs is directed more to the benefit of parking users than parking enforcement or parking management personnel. Consequently a purpose for the apparatus 10 of Fuchs in free parking zones is not so apparent. Hence it is difficult to envisage that a person skilled in the art at the relevant time would have been directly led as a matter of course to apply the Fuchs apparatus independently of any parking payment system.
I conclude the present claims have an inventive step over Fuchs.
INTERNAL FAIR BASIS
The opponent submitted that the disclosed invention is particularly concerned with avoiding unnecessary radio or transceiver activity thus conserving power. Again the opponent attached importance to the use of wake-up signals. Power conservation may be of some importance in this case but it is merely desirable compared with the overall objective of improved parking limit enforcement in the present case.
In any case I have already indicated in the Priority Date section that the overall disclosure of the present specification allowed for the use of wake-up signals to be optional. Consequently I conclude the claims of the present application, with or without a definition of the use of wake-up signals, are fairly based on the description in the present specification.
CONCLUSION
I conclude the opponent has been unsuccessful on its grounds of opposition against the patent application.
Subject to appeal, I direct the application proceed to grant.
COSTS
Each party sought its costs in this case. The opponent also submitted a cost penalty should apply against the applicant for late written submissions which were filed the day before the hearing.
Sub-regulation 5.20(4) specifies that each party must file a summary of submissions. The deadline for the opponent is at least 10 business days before the hearing. The deadline for the applicant is at least 5 business days before the hearing. On a plain reading of the sub-regulation, these timeframes appear to apply to each of the parties regardless of the actions of the other party. This position was affirmed in Mars, Incorporated v Societe Des Produits Nestle S.A., [2014] APO 44. For instance, the applicant is expected to file its summary of submissions on time even if the opponent is late in filing its summary. The indications in Mars were that, where the opponent’s summary is late, the applicant should prepare a summary responding to the case set out in the opponent’s statement of grounds and particulars, and address any additional points at the hearing. However, this is a consideration to be weighed against any other relevant considerations.
The applicant has been successful in defending its patent application. Normally this would entitle the applicant to an award of costs. However, consistent with sub-regulation 5.20(6), it is relevant to take into account that the applicant’s summary of submissions was 4 business days overdue. The only explanation of this delay appears to be that the opponent’s summary of submissions was 2 days overdue. This does not adequately explain the delay. Noting what I have said above, in the absence of a satisfactory explanation, the applicant’s delay is a consideration which weighs against it. In the circumstances, the award of costs should be reduced, and I make no award of costs.
M.G. Kraefft
Delegate of the Commissioner of Patents