UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2)

[2023] FCA 885

FEDERAL COURT OF AUSTRALIA

UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885

File number:

VID 674 of 2021

Judgment of:

MOSHINSKY J

Date of judgment:

2 August 2023

Catchwords:

PATENTS – infringement – patent for system, method and computer program for an access control system for controlling access to a restricted area (eg, a car park) – where claim 1 comprised a system including a communication system and a computer program executable by a mobile communication device (such as a smartphone) wherein the device was configured to (among other things) “determine if one or more entry criteria have been satisfied based on the received signal strength” of certain signals, and to, “in response to the one or more entry criteria being satisfied, generate and transfer … the entry request” – construction of integers – whether the applicant’s technology infringed the relevant claims

PATENTS – unjustified threats – where the first respondent threatened patent infringement proceedings against the applicant and its customers – whether the first respondent had established infringement by the applicant

PATENTS – validity – patent for system, method and computer program for an access control system for controlling access to a restricted area (eg, a car park) – where the applicant alleged the relevant claims were invalid on grounds of: not a manner of manufacture; lack of inventive step; and lack of utility

Legislation:

Competition and Consumer Act 2010 (Cth), Sch 2, Australian Consumer Law, s 18

Federal Court of Australia Act 1976 (Cth), s 21

Patents Act 1990 (Cth), ss 7, 13, 18, 117, 128, 129, 138

Cases cited:

Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411

Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29; 274 CLR 115

AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324

AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 257 CLR 356

Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; 77 IPR 229

Blatch v Archer (1774) 1 Cowp 63; 98 ER 969

Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86; 277 FCR 267

Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; 238 FCR 27

D’Arcy v Myriad Genetics Inc [2015] HCA 35; 258 CLR 334

Davies v Lazer Safe Pty Ltd [2019] FCAFC 65

Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161; 372 ALR 646

ESCO Corp v Ronneby Road Pty Ltd [2018] FCAFC 46; 131 IPR 1

Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21; 188 ALR 280

Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; 49 IPR 331

Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; 222 FCR 336

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd [2018] FCAFC 71; 264 FCR 474

Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162; 145 IPR 39

Jones v Dunkel [1959] HCA 8; 101 CLR 298

JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 116 IPR 440

Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; 222 ALR 155

Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178

Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173

Merck Sharp & Dohme Corp v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1

Minnesota Mining and Manufacturing Co & Beiersdorf (Aust) Ltd [1980] HCA 9; 144 CLR 253

Multigate Medical Devices Pty Ltd v B Braun Melsungen AG [2016] FCAFC 21; 117 IPR 1

National Research Development Corporation v Commissioner of Patents [1959] HCA 67; 102 CLR 252

PAC Mining Pty Ltd v Esco Corp [2009] FCAFC 18; 80 IPR 1

Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; 77 IPR 449

Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79

Re Klaber’s Patent (1906) 23 RPC 461

Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; 227 FCR 378

Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225

Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142; 82 IPR 467

The “Koursk” [1924] P 140

Thompson v Australian Capital Television Pty Ltd [1996] HCA 38; 186 CLR 574

Welch Perrin Co Pty Ltd v Worrel [1961] HCA 91; 106 CLR 588

Division:

General Division

Registry:

Victoria

National Practice Area:

Intellectual Property

Sub-area:

Patents and associated Statutes

Number of paragraphs:

240

Date of hearing:

12-16 December 2022

Counsel for the Applicant and Cross-respondents:

Mr C Smith SC

Solicitor for the Applicant and First Cross-respondent:

Barry.Nilsson. Lawyers

Solicitor for the Second Cross-respondent:

Clyde & Co

Counsel for the Respondents and Cross-claimants:

Mr C Dimitriadis SC with Mr M Fleming

Solicitor for the Respondents and Cross-claimants:

Spruson & Ferguson Lawyers Pty Ltd

ORDERS

VID 674 of 2021

BETWEEN:

UBIPARK PTY LTD

Applicant

AND:

TMA CAPITAL AUSTRALIA PTY LTD

First Respondent

TMA TECHNOLOGY (AUSTRALIA) PTY LIMITED

Second Respondent

ZIPBY PTY LTD

Third Respondent

AND BETWEEN:

TMA CAPITAL AUSTRALIA PTY LTD (and others named in the Schedule)

First Cross-Claimant

AND:

UBIPARK PTY LTD (and another named in the Schedule)

First Cross-Respondent

ORDER MADE BY:	MOSHINSKY J
DATE OF ORDER:	2 AUGUST 2023

THE COURT ORDERS THAT:

1.Within seven days, the parties provide any agreed minute of proposed orders to give effect to the Court’s reasons and in relation to costs.

2.If the parties cannot agree, then within 14 days each party file and serve a minute of proposed orders to give effect to the Court’s reasons and in relation to costs, and a short outline of submissions.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

TABLE OF CONTENTS

Introduction	[1]
The 335 Patent	[17]
The hearing and the evidence	[40]
Principles of construction	[55]
The skilled addressee	[64]
Common general knowledge	[67]
The Infringement Claim	[68]
Overview	[68]
Outline of UbiPark’s technology	[79]
Car parks other than Perth Airport and Adelaide car park trial	[81]
Perth Airport and Adelaide car park trial	[99]
Consideration	[102]
Integers 1.3.3 and 1.3.8	[104]
Integers 1.3.4 and 1.3.9	[133]
Integers 1.3.5 and 1.3.9	[148]
Conclusion in relation to claim 1	[165]
Claim 4	[166]
Claim 11	[167]
Claim 16	[170]
Conclusion	[173]
The Australian Consumer Law Claim	[175]
The Unjustified Threats Claim	[176]
Claim against TMA Capital	[178]
Claim against TMA Technology and Zipby	[186]
The Invalidity Claim	[195]
Manner of manufacture issue	[196]
Inventive step issue	[209]
Applicable principles	[211]
Evidence	[214]
Consideration	[220]
Utility issue	[231]
Conclusion	[240]

REASONS FOR JUDGMENT

MOSHINSKY J:

Introduction

1. The applicant, UbiPark Pty Ltd (UbiPark), supplies technology to car park owners or operators in Australia.  In broad terms, UbiPark’s technology provides a system to allow entry into and exit from a car park, and involves the use of an app (the UbiPark App) that the user of the car park downloads on their smartphone.  The technology involves a series of interactions between:

   (a)Bluetooth beacons located at the entry and exit lanes of the car park;

   (b)the UbiPark App or the user’s smartphone;

   (c)UbiPark’s servers; and

   (d)barriers at the entry and exit lanes of the car park.

2. The respondents are TMA Capital Australia Pty Ltd (TMA Capital), TMA Technology (Australia) Pty Ltd (TMA Technology) and Zipby Pty Ltd (Zipby).  TMA Technology and Zipby are related parties of TMA Capital.  I will refer to the respondents together as the TMA parties.

3. TMA Capital is the registered owner of Australian Patent No. 2019213335 (the 335 Patent), which is titled, “System, method and computer program for an access control system”.  The specification states at [0002] that the “present invention relates to a system, method, mobile communication device and one or more computer programs for an access control system for controlling access to a restricted area.  In one exemplary form, the access control system controls access to a vehicular parking area”.  The priority date is 2 February 2015.

4. In November 2021, TMA Capital (through its solicitors) sent a letter to UbiPark threatening patent infringement proceedings in respect of the 335 Patent and supply by UbiPark of its technology to car park owners and operators.  At about the same time, TMA Capital (again, through its solicitors) sent letters to customers of UbiPark threatening patent infringement proceedings.

5. In November 2021, UbiPark commenced the present proceeding against TMA Capital. In its original form, the originating application and statement of claim were solely directed to an allegation that TMA Capital had made unjustifiable threats of infringement proceedings as referred to in s 128(1) of the Patents Act 1990 (Cth) (set out below). UbiPark sought a declaration that each of the threats made by TMA Capital was unjustifiable.

6. In December 2021, TMA Capital, Zipby and a related company (which is no longer a party to the proceeding) filed a notice of cross-claim against UbiPark and Mosstyn Howell (the Chief Executive Officer of UbiPark) alleging that UbiPark had infringed various claims of the 335 Patent and that Mr Howell had been a party to, or participated in a common design to engage in, the infringing conduct. It was also alleged that UbiPark had engaged in misleading or deceptive conduct, or conduct likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law, being Sch 2 to the Competition and Consumer Act 2010 (Cth) (the Australian Consumer Law).

7. In January 2022, UbiPark filed an amended originating application in which it alleged that various claims of the 335 Patent (namely, the claims relied on in the cross-claim) were invalid.

8. In February 2022, I heard and determined an application by UbiPark for an interlocutory injunction to restrain TMA Capital from making further threats of patent infringement proceedings: UbiPark Pty Ltd v TMA Capital Australia Pty Ltd [2022] FCA 111.

9. Subsequently, changes were made to the parties to the claim and the cross-claim.  By the time of the hearing, the parties to the claim were: UbiPark as applicant and the TMA parties as respondents.  The parties to the cross-claim were: the TMA parties as cross-claimants and UbiPark and Mr Howell as cross-respondents.

10. UbiPark’s claim is set out in its further amended originating application dated 13 April 2022, its further amended statement of claim dated 13 April 2022 and its amended particulars of invalidity.  In light of TMA Capital confining the scope of its infringement cross-claim to claims 1, 4, 11 and 16 of the 335 Patent, UbiPark confined the scope of its invalidity claim to claims 1, 4, 11 and 16 (see UbiPark’s opening outline – invalidity).  (I note that claim 4 of the 335 Patent is dependent on claim 1; claims 11 and 16 are independent claims.)  Although UbiPark’s amended particulars of invalidity rely on six grounds of invalidity, only five of these were relied on during its opening outline on invalidity.  UbiPark’s case was further narrowed in closing submissions, during which it relied on only three grounds: not a ‘manner of manufacture’; lack of inventive step; and lack of utility.  Accordingly, UbiPark’s claims can be summarised as follows:

    (a)that TMA Capital made unjustifiable threats of patent infringement proceedings within the meaning of ss 128 and 129 of the Patents Act, and that each of TMA Technology and Zipby was a joint tortfeasor in respect of that conduct (the Unjustified Threats Claim); and

    (b)that claims 1, 4, 11 and 16 of the 335 Patent are invalid on the grounds of: not a manner of manufacture; lack of inventive step; and lack of utility (the Invalidity Claim).

11. The TMA parties’ cross-claim is set out in their further amended notice of cross-claim dated 21 September 2022 and their further amended statement of cross-claim of the same date.  In summary, the TMA parties contend:

    (a)that UbiPark’s conduct in making, offering for sale, selling and/or supplying to car park owners and operators a car park access system (referred to as the “UbiPark System” in the further amended statement of cross-claim), and the making and supplying the UbiPark App, infringed claims 1, 4, 11 and 16 of the 335 Patent; further or in the alternative, that UbiPark infringed claims 1, 4, 11 and 16 pursuant to s 117 of the Patents Act; further or in the alternative, that UbiPark authorised car park owners and operators using the UbiPark System and users of the UbiPark App to infringe claims 1, 4, 11 and 16, and UbiPark has therefore infringed those claims pursuant to s 13 of the Patents Act and/or been a party to or participated in a common design to engage in such infringement; further, that Mr Howell was a party to, or participated in a common design to engage in, such conduct (the Infringement Claim); and

    (b)that UbiPark, by engaging in the conduct alleged, impliedly represented to the persons to whom the UbiPark System and/or the UbiPark App was supplied that they could use the UbiPark System and/or the UbiPark App without infringing the 335 Patent, and that conduct was misleading or deceptive, or likely to mislead or deceive, contrary to s 18 of the Australian Consumer Law (the Australian Consumer Law Claim).

12. The Infringement Claim turns largely on issues of construction and factual issues regarding UbiPark’s technology.  It may be helpful to identify the construction issues at the outset, to provide context for the reasons that follow.  The construction issues can be identified by reference to claim 1.  These affect claim 4, which is a dependent claim.  Although claims 11 and 16 are independent claims, similar issues arise.  Claim 1 is in the following terms (with the addition of the numbers in square brackets and slight re-formatting):

    1.        A system including:

    [1.1]a communication system; and

    [1.2]a computer program executable by a mobile communication device associated with an entity, the entity being a user which is associated with a vehicle for parking within a restricted area, the restricted area being a vehicular parking area, [1.3] wherein the mobile communication device is configured to:

    [1.3.1]receive one or more entry signals from the communication system when the entity approaches an entry point of a restricted area;

    [1.3.2]determine a received signal strength of the one or more entry signals;

    [1.3.3]determine if one or more entry criteria have been satisfied based on the received signal strength of the one or more entry signals in order to generate and transfer an entry request;

    [1.3.4]in response to the one or more entry criteria being satisfied, generate and transfer, to the communication system, the entry request;

    [1.3.5]receive, from the communication system, authorisation data indicative of the entity being granted access to enter the restricted area by an access control system;

    [1.3.6]receive one or more exit signals from the communication system when the entity approaches an exit point of the restricted area;

    [1.3.7]determine a received signal strength of the one or more exit signals;

    [1.3.8]determine if one or more exit criteria have been satisfied based on the received signal strength of the one or more exit signals in order to generate and transfer an exit request; and

    [1.3.9]in response to the one or more exit criteria being satisfied, generate and transfer, to the communication system the exit request indicative of the authorisation data in order to exit the restricted area.

13. The three main construction issues in relation to claim 1 can be summarised as follows:

    (a)The first issue relates to integers 1.3.3 and 1.3.8, but it is bound up with the parties’ contentions relating to integers 1.3.1, 1.3.2, 1.3.6 and 1.3.7.  The contentions of each party are, in summary:

    (i)The TMA parties contend that a mobile communication device (which I will refer to as a “smartphone” for ease of expression, but which is not limited to a smartphone) “receives” entry signals from the communication system within the meaning of integer 1.3.1 at the time the signal impinges on the smartphone’s radio antenna, whether or not the signal is strong enough to be decoded.  In relation to integer 1.3.2, the TMA parties contend that a received signal strength can be “determined” directly (by measuring the power level of the signal) or indirectly (by detecting the presence of valid communicated data modulated onto the radio frequency of the signal by the beacon, which is decoded by the radio receiver).  The TMA parties contend that integer 1.3.3 requires that the received signal strength of the entry signal is used in some way to determine whether a condition of entry to the car park is satisfied.  Corresponding submissions are made for integers 1.3.6, 1.3.7 and 1.3.8.

    (ii)UbiPark contends that integer 1.3.1 means that the user’s smartphone picks up a signal that it is able to read information from, and that it is able to recognise comes from a beacon located at the entry of a relevant car park (the entry signal).  UbiPark contends that integer 1.3.2 requires that the smartphone measures the strength of the signal from that entry beacon.  UbiPark contends that integer 1.3.3 requires that the user’s smartphone performs a comparison against one or more criteria of the received signal strength that the smartphone’s receiver measures for the entry signal, or some calculation based on that measured value.  Corresponding submissions are made for integers 1.3.6, 1.3.7 and 1.3.8.

    (b)The second issue relates to integers 1.3.4 and 1.3.9.  The TMA parties contend that integer 1.3.4 may be satisfied, whether the request is transferred automatically (that is, without any user interaction with their smartphone) or upon user interaction with their smartphone (for example, a user tapping on a button on the smartphone’s screen).  UbiPark contends that integer 1.3.4 means that, if and when the criteria in integer 1.3.3 are satisfied, such that it can be inferred that the user’s vehicle is in position at the front of the queue for the relevant barrier, the smartphone sends an entry request for that barrier to be opened.

    (c)The third issue relates to integers 1.3.5 and 1.3.9.  The TMA parties contend that “authorisation data” is data that is indicative of the fact that the access control system has granted the entity access to the restricted area; the specification describes “authorisation data” as fulfilling the role of a “virtual ticket” that is stored on the user’s smartphone.  In relation to integer 1.3.9, the TMA parties contend that by being “indicative of” the “authorisation data”, it is not necessary for the exit request to contain the data or elements of it; it is sufficient if the exit request corresponds with the authorisation data in some way.  UbiPark contends that the “authorisation data” referred to in integer 1.3.5 need not specifically identify the user, but it must be specific to that particular user’s parking session, as would be the case for a paper ticket; that is, it must be a unique identifier.

14. In relation to the Unjustified Threats Claim, there is no issue that TMA Capital did threaten UbiPark and its customers with patent infringement proceedings.  The main issue is whether, as the TMA parties contend, the threats were justified on the ground that UbiPark infringed the 335 Patent.

1. UbiPark’s contentions in relation to the Invalidity Claim can be summarised as follows:

   (a)UbiPark contends that the claimed invention is not a manner of manufacture on the basis that, as a matter of substance, it is an unpatentable method, implemented using generic computers (including a smartphone); no technical contribution or improvement is made in respect of the operation of the smartphone or to the “communication system” with which the smartphone communicates.

   (b)UbiPark contends that claims 1, 4, 11 and 16 lack an inventive step on the basis that:

   (i)the idea of using an app to gain access to a car park was known or trivial; alternatively, the idea of using an app for off-street parking was common general knowledge; and the solution in claims 1, 11 and 16 was obvious;

   (ii)these contentions are fortified by a paper by Stankovski and others titled “Bluetooth parking access control”, published in Sensor Review in 2014 (Stankovski) (CB tab 2; exhibit A6), which UbiPark contends is a ‘plus one’ document for the purposes of s 7(3) of the Patents Act; and

   (iii)these contentions are also fortified by a brochure titled “How Blue Dot Beacon Works” distributed by Blue Dot Parking at the Parking Australia Convention and Exhibition held in Brisbane from 14 to 16 September 2014 (the Blue Dot Brochure) (annexure TP-8 to Ms Piper’s affidavit; CB tab 4; exhibit A8), which UbiPark contends is a ‘plus one’ document for the purposes of s 7(3) of the Patents Act.

   (c)UbiPark contends that claims 1, 4, 11 and 16 lack utility on the basis that they include subject-matter that does not address any of the problems identified in the patent.

2. For the reasons that follow, I have reached the following conclusions in respect of the claims summarised above:

   (a)The Infringement Claim is to be dismissed.

   (b)The Australian Consumer Law Claim is to be dismissed.

   (c)The Unjustified Threats Claim is established against TMA Capital, but not established against TMA Technology or Zipby.

   (d)The Invalidity Claim is to be dismissed.

   The 335 Patent

3. The patent application was filed on 6 August 2019 and granted on 21 January 2021. The application is a divisional application of Australian Patent Application No. 2016214965 (filed on 12 January 2016), which in turn claims priority from Australian Provisional Patent Application No. 2015900302 and Australian Innovation Patent Application No. 2015100112 (both filed on 2 February 2015). The content of those applications is incorporated by reference into the description in the 335 Patent: see [0001].

4. As noted above, the specification of the patent states at [0002] that the invention “relates to a system, method, mobile communication device and one or more computer programs for an access control system for controlling access to a restricted area”, for example a car park.

5. Background is provided at [0003] to [0008] of the patent.  Relevantly for some of the issues in the proceeding, this section includes:

   [0003] When a driver of a vehicle wishes to park their vehicle in a parking station, a physical ticket is issued to the driver at the entry point when being granted access to the parking station. The driver can then present the ticket to a payment machine in order to pay for the time that the vehicle has been parked in the parking station. The ticket can then be presented to another ticket machine at an exit point to be allowed to leave the parking station. Such ticketing systems have numerous problems. For example, because of the design of particular vehicles and parking stations, some drivers find it difficult to collect the ticket from the ticket machine at the entry point or insert a ticket for reading with the ticket reader at the exit point without exiting the vehicle. Generally, the driver may also attempt to hold/find the ticket while driving within the parking station which can distract the driver and may result in accidents. Furthermore, if the ticket is lost by the driver, the driver is generally required to pay full fare in order to exit the parking station. Additionally, at busy parking stations, there can be an extensive queue of drivers at payment machines to pay for their respective parking. Furthermore, at busy parking stations, there can be a significant queue at the ticket issuing and reading machines due to the time spent by the driver collecting and inserting the ticket.

   [0004] Other problems exist for other applications where a person wishes to access a restricted area using an access control system.

   [0005] For example, a residential/commercial building may have an access control system for residential parking which can be activated by using a hand operated radio transmitter or a proximity card in order to open a gate, roller door or the like. As some drivers tend to attempt to locate the radio transmitter or proximity card prior to approaching the gate/door whilst driving in order to speed up the access process, the driver tends to become distracted which can lead to accidents. Furthermore, if a new user wishes to access the restricted parking area, a new hand held transmitter or proximity card may need to be ordered, particularly if the access control system is a proprietary system.

   [0006] In relation to building access control system, users may be required to carry an identification device, such as a proximity card or the like, which can be read by a reading device in order for an access controlled door or the like to be opened. However, a large number of users tend to store their identification device in a bag or wallet which in some instances must be removed in order to be read. This can be frustrating and time consuming for the user. Additionally, as users tend to carry a number of items when travelling through such access controlled doors, it is frustrating that a dedicated device, with no other purpose, needs to be carried with the user when attempting to access the restricted area.

   [0007] There is therefore a need to alleviate one or more of the above-mentioned problems or provide a commercial alternative.

6. The next section of the specification is headed “Summary” and comprises [0009]-[0031].  The first paragraph of this section reads:

   [0009] In one aspect there is provided a system including:

   a communication system; and

   a computer program executable by a mobile communication device associated with an entity, wherein the mobile communication device is configured to:

   receive one or more entry signals from the communication system when the entity approaches an entry point of a restricted area;

   generate and transfer, to the communication system, an entry request in response to receiving at least some of the one or more entry signals;

   receive, from the communication system, authorisation data indicative of the entity being granted access to enter the restricted area by an access control system;

   receive one or more exit signals from the communication system when the entity approaches an exit point of the restricted area; and

   generate and transfer, to the communication system and in response to receiving at least some of the one or more exit signals, an exit request indicative of the authorisation data in order to exit the restricted area.

7. The summary section includes the following paragraph referring to “key data”, an expression that appears in claim 4:

   [0012] In certain embodiments, the system includes a server processing system and a data store accessible by the access control system, wherein:

   the server processing system is configured to:

   generate key data associated with the entity;

   transfer the key data to the mobile communication device for storage in memory;

   store the key data in the data store;

   wherein each entry and exit request generated by the mobile communication device is indicative of a key from the key data, wherein an access control processing system of the access control system queries the data store using the key to verify the validity of the entry request or exit request.

8. The summary section includes:

   [0014] ln certain embodiments, the communication system communicates with the mobile communication device using Bluetooth Low Energy protocol.

   [0015] In certain embodiments, the mobile communication device is configured to:

   determine a received signal strength of the one or more entry signals; and

   determine if the one or more entry criteria have been satisfied based at least partially upon the received signal strength of the one or more entry signals in order to generate and transfer the entry request.

   [0016] In certain embodiments, the mobile communication device is configured to:

   determine a received signal strength of the one or more exit signals; and

   determine if the one or more exit criteria have been satisfied based at least partially upon the received signal strength of the one or more exit signals in order to generate and transfer the exit request.

   …

   [0021] In certain embodiments, the mobile communication device is configured to automatically transfer at least one of the entry request and the exit request without user interaction.

9. The next section of the specification is headed “Brief Description of the figures” and comprises [0032]-[0047].  It is stated at [0032] that example embodiments should become apparent from the following description, and that the description is given by way of example only.  Each of the figures is then identified.  The figures are numbered from 1 to 15, including figures 10A to 10C and 11A to 11C.

10. The next section is headed “Detailed Description of Example Embodiments”.  It is reiterated at [0048] that these are examples only.  This section contains a detailed description of, and discussion by reference to, Fig 3.  That figure is as follows:

11. The description and discussion of Fig 3 is relevant to the construction issues.  It includes:

    [0057] Referring to Figure 3 there is shown an example system 302 for use with an access control system 304 for a vehicular parking station. ln one form, the system 302 operates as a virtual ticketing system. The systems 302, 304 operate together to form system 300.

    [0058] In particular, the system 302 includes a communication system 306 associated with the vehicular parking station and a computer program 308 executable upon a mobile communication device 310.

    [0059] The mobile communication device 310 can be provided in the form of a processing device 100 and more specifically in the form of a smart phone, a tablet processing system or the like. In particular, the mobile communication device 310 generally includes a processor 102, memory 104, an input device 106, an output device 108, and a communication interface 112 coupled together via a bus. The input and output device 106, 108 can be provided in an integrated form such as a touch screen display. In particular embodiments, the mobile communication device 310 can include a camera device. The mobile communication device 310 is generally associated with an entity such as a user which could be a driver or a passenger of the vehicle. The computer program 308 can be provided in the form of a ‘mobile app’.

    [0060] In use, the mobile communication device 310 could be located near the user in the vehicle, in the user’s pocket, mounted within the vehicle, or the like. Preferably, the user does not need to interact with the mobile communication device 310 during use in order for communication to occur between the mobile communication device 310 and the communication system 206. Rather, the mobile communication device 310 is configured to automatically operate and communicate with the communication system without user input in order to enter and exit the restricted vehicular parking area.

    [0061] The access control system 304 of the vehicular parking station can be a ticket issuance system including an access control processing system 312, an entry controller 314 in the form of a ticket issuance machine at an entry point of the vehicular parking station, an exit controller 316 in the form of a ticket reading machine at the exit point of the vehicular parking station, an automated entry and exit assembly 318, 320 (e.g. an automatically controlled boom gate) at the respective entry and exit points, and a vehicular detection system 322. The access control processing system 312 can be provided in the form of processing system 100.

    [0062] Advantageously, the described system 302 can be retrofitted with an existing access control system 304 that currently issues physical tickets such that an entity has an option to receive authorisation data in the form of a virtual ticket to their respective mobile communication device 310. However, it is possible for the system 300 can be (sic) newly designed and installed which includes system 302. For the purposes of clarity, the entity [in] this example is a user associated with the mobile communication device 310.

    [0063] Referring more specifically to Figure 3, the communication system 306 is generally a local communication system that utilises wireless communication. The communication system 306 includes an entry communication system 324 including at least one entry communication device associated with the entry point of the restricted area and an exit communication system 326 including at least one exit communication device associated with the exit point of the restricted area.

    [0064] In a preferable form, the communication system 306 includes a plurality of entry communication devices associated with the entry point of the restricted area and a plurality of exit communication devices associated with the exit point of the restricted area. As will be described in more detail below, the use of multiple entry and exit communication devices can be advantageous to handle different mobile communication devices which have different communication characteristics (e.g. speed, communication sensitivity, etc.).

    [0065] More specifically, the entry communication system 324 includes a first entry communication device 334 located a short distance (i.e. 0.5 to 10 metres) prior to the ticket issuance machine 314 and the entry boom gate assembly 318 at the entry point of the parking station. Similarly, a first exit communication device 354 is located a small distance (i.e. 0.5 to 10 metres) prior to the ticket reading machine 316 and the exit boom gate assembly 320 at the exit point of the parking station. In one form, the first entry communication device 334 and the first exit communication device 354 are located inside respective bollards. The first entry and exit communication devices 334, 354 are preferably fixed devices. Preferably, the first entry communication device 334 and the first exit communication device communicate 354 use Bluetooth protocol such as Bluetooth Low Energy. The wireless signal transmitted by the first entry and exit communication devices are indicative of a unique device identity/address for the respective communication device.

12. In reference to Fig 5, which illustrates an isometric view of an example of an entry or exit communication device body, and in reference to the system depicted in Fig 3, it is stated:

    [0066] Referring to Figure 5 there is shown a communication device body 325 of the first entry communication device 334 or the first exit communication device 354 which has a parabolic internal shaped wall to define a directional antenna. Figures 6 to 9 [show] the communication device body assembled with a microcontroller 328 which is mounted to the rear surface of the communication device body 325. The microcontroller 328 is configured to perform various wireless communication processing. As can be seen in Figures 6 to 9, the antenna element 327 which is in electrical communication with the microcontroller 328, is located at a focus point of the parabolic shaped internal wall. The parabolic shaped wall of the communication device body 325 defines a focused transmission region, like a “hotspot”, which the mobile communication device 310 is able to detect a strong increase in received signal strength compared to areas outside the focused transmission region. As shown in Figures 5 to 9, the directional antenna of the first entry and first exit communication devices 334, 354 is a parabolic antenna which advantageously focuses the transmission of the transmitted signal within a specific region whilst still capturing transmitted signals from the mobile communication device 310 over a broad region. It will be appreciated that a cover can extend between the side edges of the body 325 which is substantially flush with the external wall of the bollard, although for clarity purposes this has not been shown in Figures 5 to 9.

    [0067] In a preferable form, the entry communication system 324 of the communication system 306 can further include a second entry communication device 336 located within or near the ticket issuance machine 318. Furthermore, the exit communication system 326 of the communication system 306 can further include a second exit communication device 356 located within or near the ticket reading machine 316. The second entry and exit communication devices 336, 356 are preferably fixed devices. In a preferable form, the second entry and second exit communication devices 336, 356 are Bluetooth communication devices using Bluetooth Low Energy. The wireless signal transmitted by the second entry and exit communication devices 336, 356 are indicative of a unique device identity/address for the respective communication device. The second entry communication device 336 is part of or coupled to an entry point microcontroller 338, such as a Raspberry Pi microcontroller or the like, located within or near the ticket issuance machine 314. The first entry communication device 334 is also coupled, via a wired medium that extends between the bollard and the ticket issuance machine 314, to the entry point microcontroller 338. Similarly, the second exit communication device 356 is part of or coupled, via a wired medium, to an exit point microcontroller 358, such as a Raspberry Pi microcontroller or the like, located in or near the ticket reading machine 316. The first exit communication device 354 is also part of or coupled to the exit point microcontroller 358 via a wired medium that extends between the bollard and the ticket reading machine 320.

    [0068] The entry communication system 324 of the communication system 306 preferably further includes a third and fourth entry communication device 330, 332 provided in the form of a first entry transmitter 330 and a second entry transmitter 332. Furthermore, the exit communication system 326 of the communication system 306 further includes a third and fourth exit communication device 350, 352 provided in the form of first exit transmitter 350 and a second exit transmitter 352. The first and second entry and exit transmitters 330, 332, 350, 352 are configured to operate as beacons, each periodically transmitting a unique wireless signal which can be received by an approaching mobile communication device 310. The unique wireless signal can be indicative of a unique identity (such as a universally unique identifier) associated with the respective communication device. The unique wireless signals which can be received by an approaching mobile communication device 310 can be used by the mobile communication device 310 to determine which side of the vehicle (i.e. left or right) the approaching mobile communication device 310 is located. As will be explained in further detail below, determining whether a particular mobile communication device 310 is located on the left or right side of the vehicle 1000 can be used to distinguish between multiple mobile communication devices 310 located in the vehicle 1000 which are substantially simultaneously attempting to communicate with the communication system 306. Additionally, the received wireless signals from the transmitters 330, 332, 350, 352 can be analysed by the approaching mobile communication device 310 to assist with determining when an entry or exit request should be transmitted by the mobile communication device 310.

1. Immediately after a paragraph discussing Figures 11A to 11C, the specification states:

   [0071] In a general form, the mobile communication device 310 is configured to generate and transfer the entry request in response to receiving a first entry signal from the first entry communication device 334 that satisfies an entry criteria. Additionally, the mobile communication device 310 is configured to generate and transfer the exit request in response to receiving a first exit signal 354 from the first exit communication device that satisfies an exit criteria. In one form, the entry criteria and the exit criteria are based at least partially on the received signal strength of the received first entry signal and the first exit signal.

   [0072] In more preferable forms, the mobile communication device 310 is configured to generate and transfer the entry request in response to receiving a first entry signal from the first entry communication device 334 and a second entry signal from the second entry communication device 356 which substantially simultaneously satisfy one or more entry criteria. Similarly, in more preferable forms, the mobile communication device 310 is configured to generate and transfer the exit request in response to receiving a first exit signal from the first exit communication device 354 and a second exit signal from the second exit communication device 356 which substantially simultaneously satisfy one or more exit criteria.

   [0073] Due to a wide variety of locations [in] which the mobile communication device 310 can be located in a vehicle 1000 which can impact upon the received signal strength, and also the varying signal receiving characteristics of a wide variety of mobile communication devices 310, in some instances it may not be possible to predefine the entry criteria and the exit criteria solely dependent upon a predefined threshold received signal strength. Therefore, in a preferable form, the mobile communication device 310 is configured to dynamically determine an entry scale value based on the received signal strength of a plurality of third and/or fourth entry signals received from the first and second entry transmitters 330, 332 such that a predefined entry criteria can be utilised by the mobile communication device 310 to determine when to transfer the entry request using the entry scale value. Similarly, the mobile communication device 310 is configured to dynamically determine an exit scale value based on the received signal strength of a plurality of third and/or fourth exit signals received from the first and second exit transmitters 350, 352 such that a predefined exit criteria can be utilised by the mobile communication device 310 to determine when to transfer the exit request using the exit scale value.

2. I note that the expression “scale value”, which appears in [0073], is used in claim 9.  While that claim is not directly in issue, the above passage may nevertheless be relevant contextually.

3. The expression “key data”, which is used in claim 4, is referred to in the following paragraph:

   [0094] Upon successful user registration to use the system 302, the server processing system 340 additionally generates key data that is associated with the user record for the user. The key data is stored in the server database 342. In addition, the key data is transferred to the mobile communication device 310 via a communication network, wherein the mobile communication device 310 stores the key data in memory. The key data includes key pairs, where each key pair includes a single use entry key and a corresponding single use exit key. The mobile communication device 310 generates the entry request to include one of the entry keys associated with the user. The access control processing system 312 queries a registered entity database 344 accessible to the access control processing system 312 to determine whether the indicated entry key is valid. The mobile communication device 310 also generates the exit request to include the corresponding exit key associated with the user. The access control processing system 312 queries the registered entity database 344 to determine whether the indicated exit key is valid. Periodically, the server processing system 340 updates the data stored in the registered entity database 344 with new key data and new user identities to enable the access control processing system 312 to verify the validity of received entry and exit requests.

4. In reference to Fig 4, which is a flowchart representing a method performed by the various components of the system described in Fig 3, it is stated:

   [00108]   At step 415, the method 400 includes the mobile communication device 310 generating and transferring, to the second entry communication device 338, an entry request in response to one or more received entry signals satisfying one or more entry criteria. In a preferable form, the entry request is generated and transferred in an automated manner without user intervention (i.e. without the user holding the mobile communication device and without operating the mobile communication device).

5. I note that the TMA parties place emphasis on the second sentence of the above paragraph as indicating that it is only in a preferable form that the entry request is generated and transferred automatically.  A similar point can be made about [00115], which concerns the step in the flowchart relating to the exit request.

6. Figure 13 is a depiction of a system for use with an access control system for a residential/commercial parking area.  This figure is described at [00130]-[00134] of the specification.

7. The penultimate paragraph in the section describing the figures is relevant to the construction issues.  It reads:

   [00141]   In the examples described above, no user interaction with the mobile communication device 310 is required in order for the entry request or exit request to be generated and transferred. However, in particular variations on these examples, the mobile communication device 310 may be configured by the computer program 308 to allow the user to interact with a user interface of the computer program which is presented via the display of the mobile communication device in order to generate and transfer the entry request or exit request. In certain examples, analysis of the received signal strength of the entry and exit signals are unnecessary as the user simply interacts with the interface when they are about to enter or exit the restricted area. However, in other examples, the analysis of the received signal strength of the entry and exit signals can be used by the mobile communication device to enable a portion of the interface which is normally disabled. In particular, prior to approaching the entry or exit point of the restricted area, a portion of the interface of the computer program 308, such as a button, is disabled. The mobile communication device 310 is configured by the computer program to analyse the received signal strength as discussed above in prior examples. When the mobile communication device 310 determines that the one or more entry or exit criteria have been satisfied, the computer program 308 enables the button of the interface such that the user can then select the button to instruct the mobile communication device to generate and transfer the entry or exit request. This configuration reduces the risk that a user in a queue at the entry or exit point interacts with the computer program 308 to generate and transfer an entry or exit request which actually allows a different user located ahead in the queue to enter or exit the restricted area.

8. As noted above, the claims in issue are 1, 4, 11 and 16.  Claim 1 has been set out in the Introduction to these reasons.  I observe that claim 1 is to a “system” that includes two components: (1) a “communication system”; and (2) a “computer program” (eg, an app) that is executable by a “mobile communication device” (eg, a smartphone) so as to be able to configure the smartphone in a particular way, as defined by the claim.

9. Claims 4, 11 and 16 are as follows (with the addition of the numbers in square brackets):

   4.The system according to any one of claims 1 to 3, wherein the system includes [4.1] a server processing system and [4.2] a data store accessible by the access control system, wherein:

   [4.3] the server processing system is configured to:

   generate key data associated with the entity;

   [4.4] transfer the key data to the mobile communication device [4.5] for storage in memory; and

   [4.6] store the key data in the data store;

   [4.7] wherein each entry and exit request generated by the mobile communication device is indicative of a key from the key data, [4.8] wherein an access control processing system of the access control system queries the data store using the key to verify the validity of the entry request or exit request.

   …

   11.A computer program executable by a mobile communication device, wherein the computer program configures the mobile communication device to:

   receive one or more entry signals from a communication system when the user approaches an entry point of a restricted area;

   determine a received signal strength of the one or more entry signals;

   determine if one or more entry criteria have been satisfied based on the received signal strength of the one or more entry signals in order to generate and transfer an entry request;

   in response to the one or more entry criteria being satisfied, generate and transfer, to the communication system, the entry request after receiving the one or more entry signals;

   receive, from the communication system, authorisation data indicative of the user being granted access to enter the restricted area by an access control system;

   receive one or more exit signals from the communication system when the user approaches an exit point of the restricted area;

   determine a received signal strength of the one or more exit signals;

   determine if one or more exit criteria have been satisfied based on the received signal strength of the one or more exit signals in order to generate and transfer an exit request; and

   in response to the one or more exit criteria being satisfied, generate and transfer, to the communication system and after receiving the one or more exit signals, the exit request indicative of the authorisation data for processing by the access control system to enable the user to exit the restricted area.

   …

   16.      A mobile communication device configured to:

   receive one or more entry signals from a communication system when a user of the mobile communication device approaches an entry point of a restricted area;

   determine a received signal strength of the one or more entry signals;

   determine if one or more entry criteria have been satisfied based on the received signal strength of the one or more entry signals in order to generate and transfer an entry request;

   in response to the one or more entry criteria being satisfied, generate and transfer, to the communication system, the entry request after receiving the one or more entry signals;

   receive, from the communication system, authorisation data indicative of the user being granted access to enter the restricted area by an access control system;

   receive one or more exit signals from the communication system when the user approaches an exit point of the restricted area;

   determine a received signal strength of the one or more exit signals;

   determine if one or more exit criteria have been satisfied based on the received signal strength of the one or more exit signals in order to generate and transfer an exit request; and

   in response to the one or more exit criteria being satisfied, generate and transfer, to the communication system and after receiving the one or more exit signals, the exit request indicative of the authorisation data for processing by the access control system to enable the user to exit the restricted area.

10. Claim 4 is dependent on claim 1 and requires that the system include a “server processing system” and a “data store”, where the server processing system generates “key data” that is transferred to and stored on the smartphone, and then each entry and exit request that the smartphone generates is “indicative of” a “key” from that “key data”.

11. Claim 11 is an independent claim that is similarly worded to claim 1, but it is drafted by reference to a “computer program” (an app).  The computer program as claimed has to have certain properties, namely that it will configure a smartphone to operate in a particular way, so as to send and receive signals and data relating to entry into and exit from a restricted area (using the same steps described in claim 1).

12. Claim 16 is also an independent claim, similarly worded to claim 1, but it is drafted by reference to the “mobile communication device” (which I refer to as a smartphone for ease of expression).  The claimed smartphone must be configured to operate in a particular way, namely to send and receive signals and data as described in relation to claims 1 and 11.

13. Although not in issue, the following claims may be relevant by way of context:

    2.The system according to claim 1, wherein the communication system includes at least one of:

    a first entry communication device including a first directional antenna to define a focused entry signal transmission region, wherein the mobile communication device is configured to generate and transfer the entry request in response to determining that at least some of the one or more entry signals satisfy the one or more entry criteria indicative of the focused entry signal transmission region; and

    a first exit communication device including a second directional antenna to define a focused exit signal transmission region, wherein the mobile communication device is configured to generate and transfer the exit request in response to determining that at least some of the one or more exit signals satisfy the one or more the exit criteria indicative of the focused exit signal transmission region.

    3.The system according to claim 2, wherein the directional antenna of at least one of the first entry communication device and the first exit communication device is a parabolic antenna.

    …

    9.The system according to claim 3, wherein the communication system includes at least one of:

    an entry transmitter configured to transmit one or more further entry signals; and

    an exit transmitter configured to transmit one or more further exit signals;

    wherein the mobile communication device is configured by the computer program to:

    determine an entry scale value and exit scale value based on an order of magnitude of power of one or more received further entry and exit signals respectively; and

    determine one or more scaled power values of the one or more received entry and exit signals using the entry scale value and the exit scale value respectively;

    wherein the one or more entry and the one or more exit criteria are based on a growth rate of one or more scaled power values of at least some of the one or more received entry or exit signals equaling or exceeding a growth rate threshold.

    10.The system according to any one of claims 1 to 9, wherein the mobile communication device is configured to automatically transfer at least one of the entry request and the exit request without user interaction.

    The hearing and the evidence

14. The hearing dealt with issues of liability in relation to the claim and the cross-claim (other than the question of liability for additional damages).

15. Apart from independent expert evidence, UbiPark relies on evidence from the following witnesses:

    (a)William Van De Camp, the Chief Technology Officer of UbiPark, who prepared affidavits dated 4 February 2022 and 22 September 2022; and

    (b)Tracy Piper, who prepared an affidavit dated 1 July 2022.

16. Mr Van De Camp’s evidence describes how UbiPark’s technology works, which is relevant to the Infringement Claim.  Although presented as lay rather than expert evidence, his evidence deals with technological matters of the kind also dealt with in the expert evidence.  Mr Van De Camp gave some limited oral evidence in chief (in addition to his affidavit evidence) and was cross-examined.  He gave evidence in a clear and straightforward way and I generally accept his evidence.

17. Ms Piper’s evidence is relevant to the Invalidity Claim.  She is a general manager with over 25 years’ experience across a number of different industries.  In 2013, she joined together with some previous work colleagues to form a business that would create innovative technology that could solve problems for both consumers and businesses in relation to e-commerce.  They initially operated under the company name, Touch To Buy Pty Ltd (Touch To Buy), and later under other corporate structures.  In mid-2013, Touch To Buy identified parking as being a growth area to target using the e-commerce skills within the business.  They created a business division called Blue Dot Parking to develop and market a parking-based app.  Ms Piper was not required for cross-examination.

18. The TMA parties did not call any lay witnesses.

19. Each party called one independent expert witness:

    (a)The TMA parties called Geoffrey Sizer.  Mr Sizer had prepared two affidavits (and accompanying reports) for the purposes of the interlocutory injunction hearing, but these were not relied on at the hearing.  The affidavits and accompanying reports relied on at the hearing were:

    (i)Mr Sizer’s affidavit dated 21 July 2022, annexing his report of the same date (Mr Sizer’s third report);

    (ii)Mr Sizer’s affidavit dated 15 September 2022, annexing his report of the same date (Mr Sizer’s fourth report); and

    (iii)Mr Sizer’s affidavit dated 13 October 2022, annexing his report of the same date (Mr Sizer’s fifth report).

    (b)UbiPark called Howard Elliott.  He prepared three affidavits, dated 30 June 2022, 29 September 2022 and 13 October 2022.

20. Both experts gave evidence relevant to the Infringement Claim and the Invalidity Claim.

21. The experts prepared a joint report dated 9 October 2022 and gave evidence concurrently during the hearing.  Their evidence was spread over three hearing days, but occupied only part of two of those days.

22. Mr Sizer is a chartered professional engineer.  He is the Chief Executive Officer and Principal Engineer of Genesys Electronics Design Pty Ltd, a position he has held since 2005.  His key professional skills, as set out in his resume are:

    Planning and management of state-of-the-art electronic equipment and systems research and development projects from initial concept to volume manufacture, including: initial system design; regulatory compliance including medical devices; IP protection; R&D grant application, Work Breakdown Structure generation; resourcing and timescale analysis using PERT/Precedence techniques; day-to-day management of multidisciplinary teams of engineers and technical support staff; and management of subcontractors.

    System design of communications and control systems using computer/microcontroller-based equipment, high-speed digital electronics and radio frequency, optical fibre and copper cable bearers.

    Design and implementation of electronic equipment and systems from the initial design concept through to medium and large-scale production, with particular emphasis on the project planning, management and technical documentation aspects.

23. His academic qualifications are a Bachelor of Science from the University of Adelaide in Computing Science and Applied Mathematics (1977), and a Bachelor of Engineering (Electrical), with First Class Honours, from the University of Adelaide (1978).  He is a member of a number of professional associations.  He has extensive professional experience and is named as the principal inventor or co-inventor in a number of patents.

24. Mr Sizer gave evidence in a clear and confident manner.  He made sensible concessions.  His evidence was evidently intended to assist the Court.

1. Mr Elliott is a consultant and company director.  The following is a summary of his professional experience and expertise as set out in his curriculum vitae:

   I have been involved in the IT & T industry for over 25 years. After leaving academia, I started my IT career with Digital Equipment Corporation, Tandem and Stratus Computers. In 1987, I established my own consulting practise. For the past 20+ years I have concentrated on Software Development, Systems Procurement, Project & Programme Management, Technology Consulting and Dispute Resolution & Management.

   My technical expertise includes telecommunications and data networks, communications (voice and data, mobile, satellite and fixed), electronic commerce, payment systems, and internet technology.

   I have carried many assignments, both short and long term, in a variety of industries including Financial, Government and Telecommunications. Clients include MasterCard International, Optus Communications, Telstra, Cable & Wireless (UK), Cable & Wireless (HKG), SingTel Optus, KDD, BT, DBPT, Citibank, Westpac, Commonwealth Bank and NSW Government. These assignments have typically been large infrastructure investment projects, electronic commerce projects, mergers & acquisitions and strategic & tactical marketing projects. I have assisted a number of organizations to IPO including Open Telecommunications, Clarity and Orbcomm; and acted as adviser to a number of investment banks on acquisitions and major transactions.

   I have a Bachelors Degree in Mathematics (Hons), Master of Mathematics, MBA, Professional Certificate in Commercial Arbitration, Advanced Certificate in Commercial Arbitration, Master of Legal Studies and ISACA CISA. In addition, I am an qualified and Arbitrator, Mediator and Expert Determiner, and, previously Chairman of the Institute of Arbitrators & Mediators Australia ICT Sub Committee. I headed up a joint committee (IAMA, ACS and PMI) and authored a paper on Dispute Resolution in the ICT industry. I also hold CISA and PMP accreditations.

2. Mr Elliott is a member of a number of professional associations.

3. Mr Elliott gave evidence in a calm, clear, articulate and considered way.  As with Mr Sizer, his evidence was evidently intended to assist the Court.  He too made sensible concessions.

4. One difference between the evidence of Mr Sizer and that of Mr Elliott is that Mr Sizer had access to, and reviewed, the source code for the UbiPark App, whereas Mr Elliott did not review the source code for the UbiPark App; his evidence regarding the operation of UbiPark’s technology was informed by Mr Van De Camp’s evidence.

   Principles of construction

5. In Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; 222 ALR 155, the Full Court of this Court (Hill, Finn and Gyles JJ) summarised the principles of construction as follows (at [67]):

   There is no real dispute between the parties as to the principles of construction to be applied in this matter although there is some difference in emphasis. It suffices for present purposes to refer to the following:

   (i)the proper construction of a specification is a matter of law: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;

   (ii)a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 at [81] (Flexible Steel Lacing); and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1; 177 ALR 460; 50 IPR 513; [2001] HCA 8 at [24];

   (iii)the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corporation Pty Ltd at 391;

   (iv)while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224-5; (1938) 56 RPC 23 at 39;

   (v)experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-6 (Sartas No 1 Pty Ltd); the court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and

   (vi)it is for the court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd at 485-6.

6. In Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162; 145 IPR 39, the Full Court set out, at [93]-[96], a number of key principles that are also relevant here. I refer to those principles without setting them out. I note also the following principles and observations.

7. In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd [2018] FCAFC 71; 264 FCR 474 (GSK), the Full Court (Middleton, Nicholas and Burley JJ), provided the following guidance in relation to purposive construction (at [106]):

   More recent cases have continued to emphasise the need to read a patent specification as a whole and in light of the common general knowledge. They also confirm that a patent specification should be read in a practical and common sense way and given a “purposive” construction. This approach to construction requires the court to read the specification through the eyes of the skilled addressee with practical knowledge and experience in the field of work in which the invention was intended to be used and a proper understanding of the purpose of the invention.

8. In GSK (at [108]) the Full Court quoted with apparent approval the following passage from the judgment of Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 at [34]:

   “Purposive construction” does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

9. Consistently with the above, an expert witness cannot assist the court with the meaning of an ordinary English word (or phrase) unless it has a special or unusual meaning within an area of technology: see Minnesota Mining and Manufacturing Co & Beiersdorf (Aust) Ltd [1980] HCA 9; 144 CLR 253 (Minnesota Mining) at 272 per Aickin J, with whom Barwick CJ, Stephen, Mason and Wilson JJ agreed; see also Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 (Kinabalu) at [45] per Sundberg, Emmett and Greenwood JJ.

10. In Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86; 277 FCR 267, Rares, Nicholas and Burley JJ explained at [73]:

    The role of expert evidence in construing the patent specification and the claims is limited. It is to place the Court in the position of the person acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date …

11. To similar effect, in Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; 49 IPR 331, Hely J stated at [81]:

    [T]he construction of the specification is for the court, not for the expert. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.

12. The above passage has been cited with approval by three Full Courts: Kinabalu at [44]-[45]; Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; 77 IPR 229 at [14]; and PAC Mining Pty Ltd v Esco Corp [2009] FCAFC 18; 80 IPR 1 at [29].

13. In Multigate Medical Devices Pty Ltd v B Braun Melsungen AG [2016] FCAFC 21; 117 IPR 1 at [23]-[28], Bennett, Yates and Beach JJ made a series of related observations about the role of expert evidence in patent cases on issues of construction.

    The skilled addressee

14. The “skilled addressee”, or “person skilled in the relevant art” (Patents Act, s 7(2)), is a hypothetical person (or team) who has a “practical interest in the subject matter of the invention” and who “might wish to make or construct the invention”: Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]-[71] per Finkelstein J.

15. Such a person was described by French CJ in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 257 CLR 356 at [23] as a “tool of analysis”, and his Honour explained that this hypothetical person is not an “avatar” for the views of the particular expert witnesses who give evidence in a proceeding – it is a “pale shadow of a real person”.

16. In this case, there is no real dispute as to the qualities of the skilled addressee.  They would have knowledge about the basic operation of public, commercial and residential carparks.  They would also understand information systems including networking principles, computing principles (including coding), and communication protocols (including Bluetooth, Bluetooth Low Energy, mobile, internet and Wi-Fi).  It appears that both Mr Sizer and Mr Elliott have most, if not all, of these qualities.

    Common general knowledge

17. The common general knowledge may be described as “the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old”: Minnesota Mining at 292 per Aickin J.  The parties did not address the common general knowledge in any detail in their written submissions.  In the course of the concurrent evidence session, Mr Sizer gave evidence (in response to questions posed by counsel for UbiPark) about the state of knowledge that existed as at 2 February 2015 (the priority date).  I take this evidence to represent the common general knowledge as at the priority date.  Mr Sizer gave the following evidence:

    (a)A mobile communication device (or smartphone) contains a computer as one of its component parts.  It can be referred to as a computing device.  The computing functionality of the device allows it to execute or run a computer program.  The computing device, or a microcontroller embedded in a device, is capable of having software programmed to it, and it then executes that software.

    (b)As at the priority date, it was standard for smartphones and tablets to have Bluetooth receivers built in.

    (c)The term “application” is usually used to refer to a user-facing application that performs a particular function.  An application (or app) is a computer program.

    (d)A smartphone consists of software, including the operating system and what are called input/output drivers that relate to the hardware drivers on the smartphone.  The hardware devices are configured in their operation by the software.  In other words, the hardware device has a function, but the software establishes the way that that function is used in the system.

    (e)The operating system (for example, on an Apple phone, iOS) is supplied with the smartphone and provides all of the basic functions and facilities to cause the smartphone to be able to host applications (or apps).  Those apps are software that is generally written by a vendor to perform a particular function.  A smartphone also includes functions like basic telephony, message and email, and those are inbuilt functions on the smartphone.  The smartphone is supplied (eg, by Apple) with these capabilities built in, plus all of the underlying software.  For example, the software that enables the Bluetooth radio receiver or transceiver to communicate using Bluetooth is built into the smartphone as supplied by the vendor.  Android is analogous to iOS.

    (f)As one moves a smartphone away from a Bluetooth Low Energy beacon, the strength or power of the signal decreases.  Under perfect conditions, the decrease would be inversely proportional to the distance squared.

    (g)The received signal strength indicator (RSSI) value is determined by the radio receiver hardware on the smartphone.  There is an electronic circuit that accepts the signal from the antenna; that circuit will then typically generate an output voltage that is related to the radio energy signal strength.  That is then converted by an analogue-to-digital converter to produce a number, and that number is known in the software.  The smartphone will be able to determine the RSSI value, but that value has no meaning if the smartphone does not know the nature of the source of the signal.  Accordingly, the RSSI value only has meaning after the decoding process has occurred.

    (h)The scale to measure signal strength (eg, RSSI) is decibels relative to a milliwatt (dBm).  The signals are extremely low amounts of energy, below a microwatt.  Very low levels of energy are sufficient to be able to receive and decode the signal.

    (i)Decoding is a product of the rules of Bluetooth signal transmission.  It means that a pattern of digital bits is derived from the signal.  The pattern of bits must meet certain rules in terms of being a valid Bluetooth signal.  The decoding process includes an error-checking process.  If the decoding process determines that the signal is not strong enough to be error free, it will reject it as a signal and it will not relay that signal to the other sections of the software.  (I note that, during the course of the concurrent evidence (T161-165, 167-168, 171-172), a difference emerged between Mr Sizer and Mr Elliott over the steps covered by the word “decoding”.  In summary, Mr Elliott uses the word “decoding” to cover fewer steps in the process than Mr Sizer.  However, little or nothing turns on that difference for present purposes.  If and to the extent that it matters, I will proceed on the basis of Mr Sizer’s definition of “decoding”.)

    (j)The Universally Unique Identifier (UUID) is a unique identity that is encoded and associated with the Bluetooth transmission source (eg, a beacon).  It is a numeric code that is a unique identifier that only that source will have.  It is effectively equivalent to a unique name for that source.

    The Infringement Claim

    Overview

18. The Infringement Claim has been summarised in the Introduction to these reasons.  I now set out a more detailed summary of the TMA parties’ contentions, in order to identify the key matters that are in issue.

19. In the further amended statement of cross-claim at [9], the TMA parties allege:

    From a date unknown to the Cross-claimants, UbiPark has:

    a.made, offered for sale, sold and/or supplied to car park owners and/or car park operators a car park access system (the UbiPark System) which, when installed, provides car park users car park entry and exit functionality in conjunction with the use of an app which can be downloaded to a car park user’s mobile communication device(s) (the UbiPark App); and

    b.made, offered to dispose of, and disposed of, or supplied, the UbiPark App with the functionality referred to in paragraph 9.a above.

20. In its defence to cross-claim, UbiPark says that this allegation is embarrassing in that the word “system” is vague and unclear.  However, under cover of that objection, it admits that it has supplied and installed equipment for car park owners and operators that can be used in the manner alleged.  Further, under cover of that objection, UbiPark admits that it has supplied the UbiPark App (as amended from time to time) and that it can be used in the manner alleged.

21. The TMA parties allege that neither the UbiPark System nor the UbiPark App is a “staple commercial product”.  Under cover of the objection regarding “the UbiPark System”, this allegation is admitted.

22. The TMA parties allege that UbiPark has at all material times had reason to believe that:

    (a)car park owners and/or operators would use the UbiPark System to provide the functionality that the system offered for car park access and exit in conjunction with the UbiPark App; and

    (b)users of the UbiPark App would use that app to access and exit car parks owned and/or operated by those persons using the UbiPark System.

23. Subject to UbiPark’s objection regarding “the UbiPark System”, UbiPark says that it had reason to believe that some, but not all, car park operators or owners to whom UbiPark supplied equipment would use that equipment with the UbiPark App to enable car park entry and exit using that app.  UbiPark otherwise denies the allegation.

24. The TMA parties allege that UbiPark has at all material times: provided instructions for the use of the UbiPark System and UbiPark App; induced car park owners and/or operators to use the UbiPark System; and induced car park users to use the UbiPark App, to provide or implement the functionality referred earlier in the pleading.  This allegation is denied.

25. The TMA parties allege that: the UbiPark System is a system that includes the features of claims 1 and 4 of the 335 Patent; the UbiPark App is a computer program executable by a mobile communication device that includes the features of claim 11; and a mobile communication device on which the UbiPark App is installed is a mobile communication device that includes the features of claim 16.

26. The TMA parties allege that:

    (a)UbiPark has infringed claims 1, 4 and 11 of the 335 Patent pursuant to s 13 of the Patents Act;

    (b)UbiPark has infringed claims 1, 4, 11 and 16 of the patent pursuant to s 117 of the Patents Act;

    (c)car park owners and/or operators which use the UbiPark System have infringed each of claims 1 and 4 and users of the UbiPark App on their mobile communication devices who use it as part of the UbiPark System have infringed each of claims 11 and 16, and UbiPark has:

    (i)authorised such infringement and has therefore infringed those claims pursuant to s 13 of the Patents Act; and/or

    (ii)aided, abetted, counselled or procured such infringement, or been a party to, or participated in a common design to engage in, such infringement.

    (d)Mr Howell has aided, abetted, counselled or procured, or been a party to, or participated in a common design to engage in, the alleged conduct of UbiPark.

1. Insofar as UbiPark submits that claim 1 is, in substance, a claim to a ‘kit’ comprising a communication system and a computer program, with no working interrelationship between those two components, I do not accept that submission.  Claim 1 is, in substance, to a system comprising those components, with an interrelationship between them.  This is expressed in integers 1.3.1, 1.3.4, 1.3.5, 1.3.6 and 1.3.9, all of which refer to the communication system in the context of the computer program/smartphone.  Claims 11 and 16 contain comparable integers, which similarly express an interrelationship between the computer program/smartphone and the communication system.

2. The authorities on which UbiPark relies, in which it was held that particular computer-implemented schemes were not patentable subject matter, are distinguishable.  Unlike this case, those cases were concerned with mere schemes or abstract ideas implemented on computers, which were not otherwise tied to the doing of any physical thing or the creation of any physical or tangible result.  In the present case, a useful physical or tangible result is achieved, aside from the fact of the use of computers to implement the invention.

3. I therefore reject this ground of invalidity.

   Inventive step issue

4. UbiPark contends that claims 1, 4, 11 and 16 lack an inventive step on the basis that:

   (a)the idea of using an app to gain access to a car park was known or trivial; alternatively, the idea of using an app for off-street parking was common general knowledge; and the solution in claims 1, 11 and 16 was obvious;

   (b)these contentions are fortified by Stankovski, which UbiPark contends is a ‘plus one’ document for the purposes of s 7(3) of the Patents Act;

   (c)these contentions are also fortified by the Blue Dot Brochure, which UbiPark contends is a ‘plus one’ document for the purposes of s 7(3) of the Patents Act.

5. Although UbiPark previously relied on United States Patent Publication No. 2009/0325539 (Malik) as a ‘plus one’ document, UbiPark indicated in closing oral submissions that it did not press Malik as a ‘plus one’ document (T377).

   Applicable principles

6. The applicable principles can be summarised as follows. Section 7(2) of the Patents Act, in the form provided by the parties in the joint list of authorities (namely, as at 26 August 2021) relevantly provides:

   (2)For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

   (3)The information for the purposes of subsection (2) is:

   (a) any single piece of prior art information; or

   (b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

7. One approach for assessing whether a claimed invention is obvious is to consider whether the notional skilled person would directly be led as a matter of course to try a particular approach in the expectation that it may well produce a useful result: Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [53]. This test is referred to as the “modified Cripps question”. The test can be useful, but is not always appropriate to apply in every case: Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; 222 FCR 336 at [71].

8. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173, the High Court considered the issue of lack of inventive step in relation to a door lock. The Court did not use the modified Cripps question, and said that the issue of obviousness involved a question of fact that was once a “jury question” (at [51]), saying further that there must be at least a “scintilla of invention” or “some difficulty overcome, some barrier crossed” or something “beyond the skill of the calling” (at [52]). See also Merck Sharp & Dohme Corp v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 at [249]-[250].

   Evidence

9. In the present case, Ms Piper’s (unchallenged) affidavit evidence includes evidence to the following effect (noting, in particular, the references to “off-street parking”, which are of particular relevance for present purposes; this is to be distinguished from “on-street parking”, which does not involve the opening of a barrier or boom gate):

   (a)by March 2012, Roads and Maritime Services (RMS) in NSW had guidelines for “phone parking”, where a motorist used their mobile phone to pay for parking, and the system recorded details of when they parked and how long they parked for;

   (b)in March 2014, Blue Dot Parking commenced a six-month trial of its phone parking app in the City of Canada Bay, a council in Sydney; the trial was successful, and the Blue Dot Parking app was introduced to additional sites within that council area during 2014;

   (c)during May 2014, Blue Dot Parking wrote to every council in Australia to promote the Blue Dot Parking app and its then existing functionality, which was for on-street parking;

   (d)by May 2014, five councils had sought tenders for the provision of an app-based parking product, and Blue Dot Parking had submitted tenders;

   (e)around June 2014, Blue Dot Parking applied for, and won, a grant from Innovate NSW to support its development of an off-street phone parking product;

   (f)in September 2014, Blue Dot Parking promoted its app parking product, which related to both on-street and off-street parking, at the Parking Australia Convention and Exhibition in Brisbane;

   (g)by December 2014, at least eight companies with app-based parking products had been approved by RMS;

   (h)in December 2014, Brisbane City Council released a tender for the supply of a phone-based software solution for on-street and off-street parking, which was to extend the capabilities of their existing on-street mobile parking system;

   (i)in late 2014, Ms Piper was involved in promoting Blue Dot Parking’s off-street parking mobile phone product to other councils.

10. While Ms Piper’s evidence, which I accept, establishes certain factual matters, it is not suggested that Ms Piper stands in the position of the skilled addressee, as described at [66] above.

11. Mr Elliott was asked to consider whether and, if so, how a smartphone application might be used to allow a person to access, and exit, a controlled car park, approaching the matter as at February 2015.  The task is set out in Mr Elliott’s first affidavit at [13]-[16].  His response to those instructions is set out at [17]-[89] of that affidavit (the Elliott Solution).  He then discussed Stankovski, at [90]-[96].  This did not lead him to modify his solution.  Mr Elliott dealt with the Blue Dot Brochure later in his first affidavit (at [161]-[163]).  This part of the affidavit was written after Mr Elliott had been shown the 335 Patent.  He did not suggest that this document would have led him to modify his solution.

12. In the joint report, the experts agreed that the Elliott Solution did not have all of the features of claims 1, 11 and 16 of the 335 Patent.  The experts agreed that integers 1.3.5 and 1.3.9 (relating to “authorisation data”) were not present in the Elliott Solution.  In the joint report, in relation to this aspect, the experts expressed the following views, in summary:

    (a)In Mr Sizer’s opinion the role of “authorisation data” as described in claim 1 in relation to entry and exit requests is a significant aspect of the invention, and is required to allow the invention to effectively address the problems described in the 335 Patent’s specification [0003] to [0006]; and to allow the invention to be configured in a way that replaces paper tickets, as described in the specification in [0057] and [0062].

    (b)Mr Elliott expressed the opinion that, while he did not suggest, in the Elliott Solution, that the smartphone should be provided with information that confirms that the user has been granted access to the carpark, this is a basic user-friendly design option for the app.

13. During the concurrent evidence session, Mr Elliott confirmed that he did not suggest, in the Elliott Solution, the features set out in [96] of the joint report (i.e. integers 1.3.5 and 1.3.9) and, in particular, a feature of providing information that is stored on the smartphone that confirms that the user has been granted access to the car park.  He accepted that he referred to this as a basic, user-friendly design option only after he had seen the 335 Patent.  Mr Elliott agreed with Mr Sizer’s evidence that the role of authorisation data as described in claim 1 is a “significant” aspect of the invention.  Mr Elliott gave evidence that he gave a considerable amount of thought to the solution that he put forward, and that it involved an iterative process over a period of time.

14. In relation to claim 4, in the joint report, the experts agreed that the Elliott Solution did not have all the features of that claim.  The experts agreed that the use of key data was not disclosed in the Elliott Solution.  The experts agreed that this feature was significant.  In the concurrent evidence session, Mr Elliott confirmed that he agreed with Mr Sizer that the features that deal with key data as described in claim 4 are significant.

    Consideration

15. The first issue I will address is whether, as submitted by the TMA parties, Mr Elliott’s evidence proceeds from an invalid starting point.

16. UbiPark submits that:

    (a)before the priority date, the basic operation of a carpark was well known, including that it could have restricted entry and exit using barriers or boom gates, and could use a ticketing system;

    (b)it was also common general knowledge before February 2015 that mobile phone apps could be used for a wide variety of purposes, which included facilitating and paying for car parking sessions; that was, in particular, the common knowledge of those with a relevant interest in operating, or supplying technology for use in, carparks; and

    (c)a relevant goal that existed at that time was for a person to use an app on their phone to facilitate entry to and exit from a carpark, and how to do so with a minimum of user interaction.

17. In the alternative, UbiPark relies on the common general knowledge combined with one of the ‘plus one’ documents, namely Stankovski or the Blue Dot Brochure.

18. The TMA parties accept that, as at the priority date, the basic operation of a carpark was well-known, including that it could have restricted entry and exit using barriers or boom gates and could use a ticketing system.  However, the TMA parties do not accept that the evidence establishes that:

    (a)it was common general knowledge before February 2015 that mobile phone apps could be used for facilitating and paying for car parking sessions in off-street car parks; or

    (b)a relevant goal that existed at the priority date was for a person to use an app on their phone to facilitate entry to and exit from a carpark, and how to do so with a minimum of user interaction.

19. The TMA parties submit that, unless it is established that the relevant problem forms part of the common general knowledge, or that knowledge of the problem is s 7(3) information, then such knowledge or information will not be attributed to the person skilled in the art for the purposes of assessing obviousness: AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324 at [201]-[203] (relating to an earlier form of the legislation).

20. There does not appear to be any issue that Stankovski and the Blue Dot Brochure are each prior art information for the purposes of s 7(3). I will proceed on that basis.

21. I am satisfied that it was, at least, part of the common general knowledge combined with either Stankovski or the Blue Dot Brochure, that an app could be used for off-street parking.  Each of those documents discloses the use of an app for off-street parking.  In these circumstances, I do not accept the submission that Mr Elliott’s evidence proceeds from an invalid starting point.

22. The next issue I will address is whether the invention as claimed in claims 1, 4, 11 and 16 is obvious, in light of the common general knowledge alone, or the common general knowledge combined with Stankovski or the Blue Dot Brochure.  The approach taken by UbiPark to establishing obviousness was to rely on the evidence of Mr Elliott in response to the task that he was instructed to address.  However, the Elliott Solution does not have all the features of the relevant claims.  In particular, it does not disclose the receipt, from the communication system, of “authorisation data indicative of the entity being granted access to enter the restricted area” (integer 1.3.5 and corresponding integers in claims 11 and 16).  Nor does it disclose the generation and transfer of an “exit request indicative of the authorisation data” (integer 1.3.9 and corresponding integers in claims 11 and 16).  As set out above, the experts agreed that these aspects of the invention as claimed were “significant”.

23. Mr Elliott considered Stankovski in the section of his first affidavit immediately after that in which he set out his solution, but Mr Elliott did not suggest any modifications to his solution on the basis of that article.  Mr Elliott did not refer to the Blue Dot Brochure in this section of his affidavit material; he only received the brochure after having reviewed the 335 Patent, and does not suggest that it would have caused him to modify his solution.

24. UbiPark submits that: the inclusion of some form of authorisation data was plainly encompassed by the Elliott Solution; there are two main options to address issues of authorisation – store relevant information on the smartphone or store relevant information on the servers; it was not material which of the two basic options was adopted; both are obvious.  The difficulty with these submissions is that, as set out above, the experts agreed that the Elliott Solution did not include integers 1.3.5 and 1.3.9 and that those integers are significant.  While the Elliott Solution did refer to functionality including “identifying whether the user is authorised to enter and/or exit the car park” (at [19(d)]), that is not the same as the features described in integers 1.3.5 and 1.3.9, which involve authorisation data indicating that the user has been granted access to enter the car park, and an exit request that is indicative of that authorisation data.  This functions, in a sense, as a virtual parking ticket.

25. In light of the above, I am not satisfied that the invention as claimed is obvious.  Accordingly, this ground of invalidity is not made out.

    Utility issue

26. UbiPark contends that claims 1, 4, 11 and 16 lack utility on the basis that they include subject-matter that does not address any of the problems identified in the patent.

27. The applicable principles may be shortly stated as follows.  If an invention “so far as claimed in any claim” is not useful, it is invalid and liable to be revoked: Patents Act, s 18(1)(c) and s 138(3)(b). If the claimed invention does what it is intended by the patentee to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c): Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; 77 IPR 449 at [141] per Emmett, Weinberg and Bennett JJ; see also Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 96 per Gummow J.

28. While it is established that all that is within the scope of a claim must be useful, that proposition is tempered by the consideration that the specification and claims should not “be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning”: ESCO Corp v Ronneby Road Pty Ltd [2018] FCAFC 46; 131 IPR 1 at [235], citing Welch Perrin Co Pty Ltd v Worrel [1961] HCA 91; 106 CLR 588 at 602.

29. In the joint report, the experts agreed that claim 1 includes systems that have practical operation.  They also agreed that systems that have no practical operation could be imagined within the scope of claim 1.  It was also stated in the joint report at [118] that, in Mr Elliott’s view, a system could be imagined where no checks were made to determine whether the entity (the user) was permitted to enter the restricted area; this would not amount to a practical system where the objective included “parking within a restricted area”.

30. The following points emerged during the concurrent evidence session:

    (a)Mr Elliott accepted that he would not actually go out and make a system that had no practical operation.

    (b)In reference to the example given by Mr Elliott in the joint report (where no checks are made to determine whether the entity is permitted to enter the restricted area), it was put to Mr Elliott that the language of the claim indicates that a check of some kind must be conducted to confirm that the entity is authorised to enter the restricted area.  Mr Elliott did not accept this.

    (c)Mr Sizer gave evidence that, implicit in the operation of the system is that there is something done to authorise entry, but the claim does not say how or where that is done; having regard to the fact that the claim refers to a system and an access control system, and reading the claim in conjunction with the specification, it becomes clear that there is an authorisation process, albeit the claim does not describe what the authorisation process is.  Mr Elliott agreed with this.

    (d)In relation to [118] of the joint report, Mr Elliott said that, if a check of payment is made before exit, then the system has a practical operation.

    (e)Mr Sizer accepted that claim 1 does not necessarily require a check that a particular user is authorised to enter the car park.

    (f)Mr Sizer accepted that, for embodiments of claim 1 to be suitable for use in a public car park, it would be necessary to incorporate into claim 1 a mechanism by which the person parking ultimately pays for their parking.  Mr Sizer accepted that, in the context of a car park in a residential or commercial building, there would need to be an additional requirement within claim 1 to check that the person who possesses the smartphone (and, by inference, that person) is an authorised person to park there.

31. UbiPark submits that: [0003] to [0006] of the 335 Patent set out a number of potential problems that the claimed invention is to address or alleviate (see [0007]); those problems include difficulties with collecting or losing a ticket in the context of a paid carpark, the need to queue to pay for parking, and the difficulty of having to locate or access a transmitter or card to open a barrier or door; the asserted claims are claimed in broad, general terms; notably, they do not include the following limitations:

    (a)any requirement for payment;

    (b)any requirement for any check as to identification/authorisation for entry into the carpark; or

    (c)on the TMA parties’ construction, any requirement that the barrier be opened without the need for user input.

32. In my view, on the basis of the construction that I have given to integers 1.3.4/1.3.9 (see [135]-[140] above), the invention as claimed in claims 1, 4, 11 and 16 has utility.  On that construction, the invention as claimed involves an entry request and an exit request being generated and transferred “in response to” the one or more entry or exit criteria being satisfied, that is, without user intervention.  This addresses at least one of the problems identified at [0003]-[0006] of the specification, namely the difficulty of having to locate or access a transmitter or card to open a barrier or door.  It follows from my acceptance of UbiPark’s construction of integers 1.3.4/1.3.9 that I do not accept its submission that the invention as claimed lacks utility.

1. Accordingly, this ground of invalidity is not made out.

2. It follows that the Invalidity Claim is to be dismissed.

   Conclusion

3. For these reasons, I have reached the conclusions summarised at [16] above.

I certify that the preceding two hundred and forty (240) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Moshinsky.

Associate:

Dated:       2 August 2023

SCHEDULE OF PARTIES

VID 674 of 2021
Cross-Claimants
Second Cross-Claimant:	TMA TECHNOLOGY (AUSTRALIA) PTY LIMITED
Third Cross-Claimant:	ZIPBY PTY LTD
Cross-Respondents
Second Cross-Respondent:	MOSSTYN HOWELL