Todd Martin

[2017] APO 33

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Todd Martin [2017] APO 33

Innovation Patent:  2012100801

Title:System and Method for Providing an Athlete with a Performance Profile

Patentee:  Todd Martin

Delegate:  M. G. Kraefft

Decision Date:  7 July 2017

Hearing Date:  Written submissions filed on 2 June 2017

Catchwords:  PATENTS – section 101B – innovation patent – tracking usage of athletic equipment in real-time – issuing warnings of pending maximum usage – examiner’s objection – whether invention is a manner of manufacture – alleged invention not a manner of manufacture – innovation patent revoked.

Representation:  Patent attorney for the patentee:  Eagar & Martin.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovation Patent:  2012100801

Title:System and Method for Providing an Athlete with a Performance Profile

Patentee:  Todd Martin

Date of Decision:  7  July 2017

DECISION

The substance and contribution of the alleged invention relates to acquiring, monitoring and using athletic training data to issue a timely warning to an athlete as appropriate.  The alleged invention is not for a manner of manufacture and thus is not patentable subject matter. 

The innovation patent is revoked.

REASONS FOR DECISION

BACKGROUND

1. Todd Martin (“the patentee”) filed innovation patent application 2012100801 on 31 May 2012.  The application claimed priority from a US application filed on 31 May 2011.

2. The innovation patent has been subjected to four examination reports.  In each case the examiner raised an objection that the claims do not define a manner of manufacture.

3. The patentee proposed to amend the claims of the specification on several occasions to address the examiner’s objection.  Nonetheless the examiner has remained unpersuaded by the proposed amendments.

4. At the invitation of the Patent Office in the fourth examination report, on 2 May 2017 the patentee requested to be heard.  The hearing was conducted by way of written submissions.

5. While the final date to gain certification of the innovation patent was 2 May 2017, patent sub-regulation 9A.4(f) may be available to extend the time for gaining certification to 3 months from the date of the present decision.

   SPECIFICATION

6. The specification states that the present invention relates to improvements in a system for storing training data entered by an athlete, associating information with the athlete that is related to the athlete’s participation in training and/or racing activities, and generating a profile specific to the athlete.  An objective of the alleged invention, from the background description, is to seek to provide an athlete with relevant information to enhance the athlete’s fitness.

7. In a preferred aspect, the specification describes the alleged invention as directed to a web-based platform tailored to providing access to information regarding athletic or sporting events and personal training information.  The system may include an events calendar, which is able to be personalized, a training log, a media portal containing photos of a participant in an event, and a rankings generator configured to rank a user against other users within a given set of parameters.

8. The specification defines the term “configured” to include creating, changing, or modifying a program on a computer or network of computers so that the computer or network of computers behave according to a set of instructions.  Moreover, the specification states that the programming to accomplish the various embodiments described in the specification would be apparent to a person of ordinary skill in the art.

9. The progressive amendments proposed by the patentee during examination have focused the claimed invention towards a system or method for tracking usage of athletic equipment, and more particularly by using a global positioning system (“GPS”).  More precisely, the claimed invention includes a system that warns the athlete of approaching maximum usage of the equipment.

10. The specification ends with five claims.  Claims 1 and 5 are independent claims.  These claims, as presently proposed to be amended, read as follows.

    1.A system for tracking usage of athletic equipment of an athlete, including:

    a computer web-based training log server configured to:
    receive and record data of the athlete regarding a type of training activity in which the athlete is engaged, the training activities including running and cycling;
    receive and record training data of the athlete regarding a distance being travelled by the athlete during the training activity; and
    receive and record training data of the athlete regarding a training time for the type of training activity being recorded;
    a processor configured to generate a graphical user interface having a plurality of fields for entering data regarding the use of the athletic equipment used by the athlete, at least one of said fields pertaining to a warning value enterable by the athlete, said processor being configured to: track usage of the athletic equipment based on usage data received and stored by said training log server, and issue a warning to the athlete that the athletic equipment is approaching maximum usage once the usage reaches the warning value entered by the athlete; and
    a GPS-enabled mobile device, said GPS mobile device being configured to communicate the training data of the athlete live to said web-based training log server as the athlete is training to automatically update said training log server.

    5.A method for tracking usage of athletic equipment of an athlete engaged in training activities including running and cycling, the method including:

    recording, in a computer web-based training log server, a warning distance for the athletic equipment;
    recording, in the computer web-based training log server, a maximum usage distance for the athletic equipment;
    updating, as the athlete is training, the computer web-based training log server with training data communicated from a GPS-enabled device carried by the athlete, the training data including distance travelled by the athlete during a training activity;
    tracking a usage distance of the athletic equipment based on the training data communicated to the training log server; and
    electronically sending a warning to the athlete that the athletic equipment is approaching the maximum usage distance once the usage distance reaches the recorded warning value.

11. From the above, it is apparent that claim 5 is a method claim predominantly focused on a distance warning system, as compared to claim 1 which defines the recording of further data types such as training time and further defines a processor configured to generate a graphical user interface with multiple fields for enabling data entry regarding the use of the athletic equipment.

    APPLICABLE LAW

12. The patentee requested examination on 12 September 2016.  As a consequence, substantive amendments to the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, effective 15 April 2013, apply in the present case.

13. Thus the standard of proof that applies to the examination of the present innovation patent is the balance of probabilities (Section 101E of the Patents Act).  I must certify the innovation patent if satisfied, on the balance of probabilities, that the innovation patent complies with the Act.  If I am not so satisfied then I can revoke the innovation patent.

14. Sub-section 18(1A) of the Patents Act 1990 is relevant for innovation patents.  That sub-section provides that:-

    (1A)  Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation 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 …

15. In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in this regard. At page 275, “… 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”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose.  At page 277:-

    “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 … 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.”

16. The High Court though was not laying down a precise formulation that can be applied unthinkingly.  In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:-

    “This Court in NRDC did 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.”

17. That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim.  The point was made succinctly in the Myriad case by Gageler and Nettle JJ.  At [144]:-

    “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.”

18. In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-

    “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.”

19. Moreover at [98]:-

    “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”.

20. The Full Court of the Federal Court in RPL then detailed a number of considerations relevant to the determination and coming from earlier decisions of the Court.  Summarising from [99] of RPL:-

    • It is necessary to ascertain whether the contribution to the claimed invention is technical in nature.
    • 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?

21. In Research Affiliates LLC v Commissioner of Patents, [2014] FCAFC 150, the Full Federal Court noted similarities in approach between Australia, the United Kingdom (“UK”) and the United States (“US”). In particular, the UK consideration of the “necessary technical contribution”, in the context of the statutory exclusions existing in the UK, was of relevance to an analysis of a necessary technical or artificial effect under Australian law (see [36], [45]). It follows that the UK cases may provide assistance in the present case.

22. In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7, the England and Wales Court of Appeal outlined a four-step “technical effect” approach in respect to the question of excluded subject matter under UK law. At [40]:-

    “(1) properly construe the claim

    (2)identify the actual contribution;

    (3)ask whether it falls solely within the excluded subject matter;

    (4)check whether the actual or alleged contribution is actually technical in nature.”

23. In addressing the second step, Jacob L.J. stated at [43]:-

    “The second step – identify the contribution – is said to be more problematical.  How do you assess the contribution?  Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are.  What has the inventor really added to human knowledge perhaps best sums up the exercise.  The formulation involves looking at substance not form – which is surely what the legislator intended.”

24. In IGT v The Comptroller General of Patents, [2007] EWHC 1341 (Pat), the High Court of England and Wales at [12] followed the four-step approach from Aerotel. Moreover at [39]:-

    “… applying the Aerotel four stage test, the issue of what is ‘technical’ is of much less importance than in the past since that aspect ought to have been dealt with in looking at the third step.”

25. Research Affiliates at [29] also cited the four step approach from Aerotel.

26. On the other hand, care must be taken not to determine the substance of the claimed invention merely on the basis of excluding known features in the claims.  As indicated by Kitchin L.J. in Lantana Limited v The Comptroller General of Patents, Design and Trade Marks, [2014] EWCA Civ 1463, at [64]:-

    “… it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other.  Thus in Symbian Ltd v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, Lord Neuberger (giving the judgment of the court) said at [37] (referring to decision T 0208/84 Vicom Systems Inc/Computer related invention [1987] OJ EPO 14, [1987] 2 EPOR 74 at [37]):

    ‘Finally at [16] the Board described “making a distinction between embodiments of the same invention carried out in hardware or in software” as “inappropriate”, as what is decisive is “the technical contribution which the invention described in the claim when considered as a whole makes to the known art”.’

    SUBMISSIONS

27. The patentee’s submissions principally pursued two avenues.  The first was that the law relating to combinations of interrelated components was the most appropriate law for considering whether the claimed invention was a manner of manufacture.  The patentee asserted this was the most appropriate law because the substance of the claimed invention lay in a combination of integers, only one of which was a computer implementation.  The second avenue was that, even under the computer-centric guidance of Research Affiliates and RPL, the claimed invention was a technical innovation and defined a manner of manufacture.

28. In respect to the first avenue, the patentee cited British Celanese Ltd v Courtaulds Ltd, (1935) 52 RPC 171. At pages 193-194:-

    “It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject matter in the idea of the working inter-relation brought about by the collocation of the integers.”

29. The patentee submitted that, in the present case, the claimed invention was performed by a combination of a specifically programmed processor and computer web-based training log server together with a GPS-enabled device.  In combination, the GPS device communicated training data live to the training log server to automatically update the server while the user was training.  This resulted in a working interrelationship that produced a synergistic effect because live updating of training data permitted timelier issuance of a warning.

30. In respect to the second avenue, amongst other things the patentee highlighted a statement from RPL.  At [100]:-

    “… there is a distinction between a technological innovation which is patentable and a business innovation which is not.”

31. The patentee submitted the claimed invention was drawn to a technical innovation.  The operations within the processor and training log server were technical in nature, and the communication between those integers and the GPS-enabled device were technical in nature.  The patentee stated it followed that the combination of a specifically programmed processor and computer web-based training log server together with a GPS-enabled device was also technical in nature.  The combined integers solved a technical problem of dynamically ascertaining the need to replace or cease use of athletic equipment before such use becomes dangerous or causes injury.  On this point the patentee concluded the substance of the claimed invention solved this technical problem by issuing a timelier warning to an athlete.

32. The patentee further submitted the present claims had merit as they set forth a way of carrying out the claimed invention.  For example in RPL at [104]:-

    “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.”

33. Finally the patentee addressed all the points listed in Aristocrat Technologies Australia Pty Ltd, [2016] APO 49 at [35], to support the contention that the claims were directed to a manner of manufacture.

    DISCUSSION

34. There would be little doubt about the general correctness that combinations of interrelated components having some working inter-relationship would generally be fit subject matter, as per the British Celanese case.  In establishing subject matter that would meet this criterion, it would appear essential nonetheless to establish the substance of the claimed invention over the form of the claims, as per the Myriad case.

35. In deciding the present matter, the approach in Aerotel would appear to be particularly beneficial.  The present matter appears to rest substantially on the construction of the claims and the supposed contribution that is made to the art.  I will broadly follow the Aerotel approach.

    CONSTRUING THE CLAIMS

36. The claimed invention is an arrangement of system elements where, at a minimum, the arrangement comprises a server and a GPS-enabled device.  Claim 1 further includes a processor configured to generate a graphical user interface enabling data entry, which may be entered by the athlete, in multiple fields of the graphical user interface.  These components variously provide the means for acquiring and communicating training data, and tracking usage of athletic equipment.

37. The claimed invention is characterised by a warning mechanism to the athlete of the approach of maximum usage of equipment once the athlete’s usage reaches a warning point, recorded by the system.  The claims do not specify the means by which the athlete receives the warning.  Notably though, the GPS-enabled device enables live or real-time uploads of training usage to the server to enable timely warnings to be issued to the athlete. 

1. In submissions, the patentee made much of the substance of the claimed invention lying in a combination of integers, only one of which was a computer implementation.  More specifically, the patentee stated the computer operation in the present case was coupled with a remote GPS device, and that this coupling was non-generic.  While it would be fair to state that GPS tracking is founded on signal propagation from a network of orbiting satellites, it is nonetheless also the case that GPS navigation systems and GPS receiver devices, such as in mobiles, have been intrinsically linked with computer systems for their operation for a considerable period of time.  Embedded software in GPS receivers to enable displays of interactive maps, points of interest and routing instructions in speech form would be a case in point.

   ACTUAL CONTRIBUTION TO THE ART

2. The problem said to be solved in the present case is of the athlete not receiving a warning about pending maximum usage until after the training data is uploaded to the server at the end of a training activity.  The GPS-enabled device interacting with the server enables uploads substantially in real-time, resulting in timelier warnings as appropriate.

3. Data input, sensing, tracking, information flow and output in real-time had been a feature of computer information processing systems for a considerable period of time before the priority date.  Remaining in the field of GPS, one need merely consider the commercial applications of GPS for tracking vehicles or personnel, and providing real-time outputs and information related to their precise locations since at least the mid-2000s.  Commonly, GPS tracking devices, on vehicles for example, uploaded tracking data for logging and processing purposes, for example to provide currency of information for the benefit of fleet managers and for public transport operators and users.

4. In the body of the specification, the GPS device is mentioned for the first time on page 21.  Quoting from the second full paragraph:-

   “The foregoing description is by way of example only, and may be varied considerably without departing from the scope of the present invention.  For example only, the platform may be optimized for use with hand-held mobile devices.  For example, a registered user may access their own training log while at the gym or immediately after a workout and update their training log remotely.  Additionally, the training log may be updated automatically with a GPS device in sync with training log feature 124.  For example, a cyclist or runner may wear a GPS-enable device which is Internet ready so that as the user is training, training data is being communicated ‘live’ to the user’s personal training log on the platform.”

5. From the above, it would appear that the GPS device and its interaction with the Internet or any other computing aspects is given, and that there was nothing in these interactions or the operation of the system in real time that was not known before the priority date.  The contribution to the art that appears to be made in the present case can then only be in respect to the upload and tracking of training data, the comparison of that data with a warning point recorded in the system, and the issuing of a warning to the athlete as appropriate.

   EXCLUDED SUBJECT MATTER AND WHETHER THE CONTRIBUTION IS ACTUALLY TECHNICAL IN NATURE

6. As noted above, the UK consideration of the “necessary technical contribution” is in the context of the statutory exclusions of subject matter existing in the UK.  Nonetheless the UK approach is of relevance to an analysis of a necessary technical or artificial effect under Australian law (Research Affiliates at [36] and [45]). It would appear that steps 3 and 4 of the four-step approach in Aerotel may be considered together in the present case.

7. It may be that the combination of features of acquiring training data, tracking that data and issuing a warning, dependent on the approach of maximum usage of equipment, may be looked at as creating a technical effect.  However, this effect principally relates to the nature of the data that is acquired and tracked, and the nature and timing of the information that is output or issued at the appropriate point.  This is largely a programming issue.  In this regard, the specification indicates, at the foot of page 1, that the programming to accomplish the various embodiments will be apparent to a person of ordinary skill in the art.  

8. In the present case, each of the system elements is used in their normal way.  The GPS device enables real-time updates of training data.  The server logs that data and a timely warning may be issued as appropriate.  The patentee argued the technical contribution of the combination was a timelier, quicker communication or issuance of a warning.  However, the timeliness of the warning is unrelated to any enhanced functionality of the system.  Rather the timeliness arises from the use of a standard, real-time upload device.  The presently claimed invention is merely the use of a GPS-enabled device, server and/or processor for their standard purposes.  I find there is no technical contribution made by the devices individually or in combination in the present case.

9. As mentioned above, the patentee also addressed all the points listed in the Aristocrat decision at [35] to support the contention that the claims were directed to a manner of manufacture.  It may be prudent to address the approach and use of those points.  For convenience, paragraph [35] of the Aristocrat decision is repeated at Annex A below.

10. With this list of points, the delegate in the Aristocrat 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.

11. In the present case, on balance I think it cannot be fairly said that the overall claimed arrangement solves a technical problem within or outside the computer, or results in an improvement in the functioning of a computer or computer system.  I consider that the substance of the alleged invention in the present case is a scheme for acquiring, monitoring and using training data in real-time to issue a timely warning to the athlete as appropriate.  The contribution to the art is not in any computing aspect of the alleged invention.  I conclude the claims of the innovation patent are not for a manner of manufacture and thus do not contain patentable subject matter. 

12. The body of the specification is concerned with the provision of training and athletic information to the athlete.  The specification states that the invention is directed to a web-based platform tailored to providing access to information regarding athletic or sporting events and personal training information.  That is, the tailoring of the platform, including its servers, databases and processor, is only in respect to the nature of the information to be acquired from content providers or users, and stored, managed and provided to the athlete.  I find there is nothing in the body of the specification from which patentable subject matter may be drawn.

    CONCLUSION

13. I have found that the substance and contribution of the alleged invention is about acquiring, monitoring and using training data to issue a timely warning to the athlete as appropriate.  This is not patentable subject matter.  The fact that the alleged invention may be embodied in a computing environment does not affect the outcome in this case.

14. I revoke the present innovation patent.

    M. G. Kraefft
    Delegate of the Commissioner of Patents

    Annex A

    After a relatively lengthy consideration of the applicable law in the Aristocrat case, the delegate stated the following at [35].

    [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.