Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 8)
[2023] FCA 182
•8 March 2023
FEDERAL COURT OF AUSTRALIA
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 8) [2023] FCA 182
File number: NSD 200 of 2019 Judgment of: BESANKO J Date of judgment: 8 March 2023 Catchwords: PATENTS — two patents for methods, apparatuses and systems for vehicle detection and determination of vehicle overstay in time-limited parking space — wireless communication between subterraneous detection apparatus and above-ground detection collection apparatus
PATENTS — claims for infringement of claims against two respondents — infringement issues – cross-claim alleging invalidity — claims for additional damages
PATENTS — infringement — proper construction of claims — whether the first respondent’s vehicle overstay detection system used a wake-up signal — whether the claims include a method or system where the determination of vehicle overstay is made by the above-ground detection collection apparatus instead of the subterraneous detection apparatus
PATENTS — infringement — whether first respondent is liable for infringing acts because it has authorised those acts, or because it is a joint tortfeasor in relation to those acts — limitation period and s 120(4) of the Patents Act 1990 (Cth) — authorisation under s 13 of the Patents Act 1990 (Cth) — construction of Deed of Release dated 18 June 2014
PATENTS — infringement — claims for additional damages — whether infringements have been flagrant — whether infringing conduct repeated without restraint — whether benefit obtained because of infringing conduct — requirement to consider all matters appearing under s 122(1A) of the Patents Act 1990 (Cth)
PATENTS — best method — whether patentee has described best method known to it of performing the invention — alleged failure by patentee to disclose transceiver (ASTRX2 transceiver) used by it and known to be the best transceiver for working the invention — advantages of ASTRX2 transceiver — identification of the invention
PATENTS — best method — whether patentee has described best method known to it of performing the invention — alleged failure by patentee to describe the antenna developed and used by it — nature and features of antenna — work performed by patentee in designing, developing and tuning antenna
PATENTS — sufficiency — whether the patentee has fully described the invention — alleged failure to describe antenna
PATENTS — entitlement — whether a person not named in the patent as an inventor was a co-inventor of the invention — whether work done by person with respect to antenna and Production Circuit Boards was a material contribution to the invention — whether, in any event, it would be just and equitable under s 138(4) of the Patents Act 1990 (Cth) to make an order
PATENTS — inventive step — claim that invention obvious in light of common general knowledge — field of the invention — the content of common general knowledge — evidence of disadvantages of existing methods of detection of vehicle overstay — expert evidence in the field of electronic engineering — whether skilled addressee would be led directly as a matter of course to the invention
PATENTS — fair basis — whether claims not involving a wake-up signal fairly based on matter in the specifications of the patents — test for fair basis — relevance of previous decision of this Court in Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; (2013) 101 IPR 496
PATENTS — false suggestion and misrepresentation — whether patents or claims in patents obtained by false suggestion —relevance of position taken by Commissioner of Patents
PATENTS — lack of clarity and failure to define the invention — whether claims in First Patent which do not require vehicle overstay to be determined by the subterraneous detection apparatus lack clarity and fail to define the invention
Legislation: Evidence Act 1995 (Cth) s 136
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1990 (Cth) ss 7, 13, 15, 18, 22A, 40, 117, 120, 122, 123, 138
Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013 (No 1) (Cth)
Cases cited: Adelaide Corporation v Australasian Performing Right Association Limited [1928] HCA 10; (1928) 40 CLR 481
Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411
Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2012] FCA 748; (2012) 293 ALR 272
Apotex Pty Ltd v Warner-Lambert Co LLC (No 2) [2016] FCA 1238; (2016) 122 IPR 17
AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324
AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356
Bayer Pharma Aktiengesellschaft v Genentech, Inc [2012] FCA 1467; (2012) 98 IPR 424
Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75; (2010) 86 IPR 468
Blueport Nominees Pty Ltd v Sewerage Management Services Pty Ltd [2015] FCA 631; (2015) 251 FCR 127
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019
British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221
Collins v Northern Territory [2007] FCAFC 152; (2007) 161 FCR 549
Dynamic Supplies Pty Ltd v Tonnex International Pty Limited (No 3) [2014] FCA 909; (2014) 312 ALR 705; (2014) 107 IPR 548
E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Limited [2005] FCA 892; (2005) 66 IPR 462
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173
Eli Lilly & Co v Pfizer Overseas Pharmaceuticals [2005] FCA 67; (2005) 218 ALR 408; (2005) 64 IPR 506
Firebelt Pty Ltd v Brambles Australia Ltd [2000] FCA 1689; (2000) 51 IPR 531
Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21; (2002) 76 ALJR 816; (2002) 188 ALR 280
Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746; (2008) 76 IPR 763
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457
GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90; (2016) 120 IPR 406
GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd [2018] FCAFC 71; (2018) 264 FCR 474
Graham Hart (1971) Pty Ltd v SW Hart & Co Pty Ltd [1978] HCA 61; (1978) 141 CLR 305
ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577
ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [2000] FCA 1349; (2000) 106 FCR 214
Industrial Galvanizers Corporation Pty Ltd v Safe Direction Pty Ltd [2018] FCA 1192; (2018) 135 IPR 220
Innovative Agriculture Products Pty Ltd v Cranshaw (1996) 35 IPR 643
JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474; (2005) 67 IPR 68
Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155; (2005) 65 IPR 86
Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1
Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; (2016) 247 FCR 61
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253
Morton-Norwich Products Inc v Intercen Ltd [1978] RPC 501
Northern Territory v Collins [2008] HCA 49; (2008) 235 CLR 619
Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240; (2019) 154 IPR 215
Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224; (2005) 225 ALR 416; (2005) 68 IPR 1
PhotoCure ASA v Queen’s University at Kingston [2005] FCA 344; (2005) 216 ALR 41; (2005) 64 IPR 314
Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9; (2008) 165 FCR 527
Prestige Group (Aust) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197
Raleigh Cycle Co Ltd v H Miller & Co Ltd [1948] 1 All ER 308; (1948) 65 RPC 141
Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449
RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565; (1989) 13 IPR 513
Re Alsop’s Patent [1907] 24 RPC 733
Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119; (1992) 111 ALR 205
SandvikIntellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2016] FCA 236; (2016) 118 IPR 421
SandvikIntellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138; (2017) 348 ALR 156; (2017) 126 IPR 427
University of New South Wales v Moorhouse [1975] HCA 26; (1975) 133 CLR 1
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; (2013) 101 IPR 496
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 4) [2020] FCA 819
Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 6) [2020] FCA 1866
Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 29 RPC 245
Warner-Lambert Co LLC v Apotex Pty Limited (No 2) [2018] FCAFC 26; (2018) 355 ALR 44; (2018) 129 IPR 205
Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 672 Dates of hearing: 22–26, 29–31 March 2021 & 15–16 April 2021 Counsel for the Applicant/Cross-Respondent: Mr R Cobden SC with Ms P Arcus and Ms J Ambikapathy Solicitor for the Applicant/Cross-Respondent: Johnson Winter & Slattery Counsel for the First Respondent/Cross-Claimant: Mr B Caine QC with Ms C Cunliffe Solicitor for the First Respondent/Cross-Claimant: Norton Rose Fulbright Australia Counsel for the Second Respondent: Mr H Bevan with Mr A McRobert Solicitor for the Second Respondent: Ashurst Australia ORDERS
NSD 200 of 2019 BETWEEN: VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136
Applicant
AND: SARB MANAGEMENT GROUP PTY LTD (T/A DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722
First Respondent
CITY OF MELBOURNE
Second Respondent
AND BETWEEN: SARB MANAGEMENT GROUP PTY LTD (T/A DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722
Cross-Claimant
AND: VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136
Cross-Respondent
ORDER MADE BY:
BESANKO J
DATE OF ORDER:
8 MARCH 2023
THE COURT ORDERS THAT:
1.The applicant bring in draft minutes of order reflecting the conclusions in these reasons and the parties will be heard as to the terms of the orders.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
BESANKO J:
Introduction
Vehicle Monitoring Systems Pty Limited (VMS) is the registered owner of two patents. The first patent is Australian Patent No. 2005243110 and bears the title “Method, apparatus and system for parking overstay detection” (the First Patent). The second patent is Australian Patent No. 2011204924 (the Second Patent) and has the same title. The invention is for identifying the overstay of a vehicle in a parking space and involves a battery-powered subterraneous detection apparatus (DA) to detect the presence of a vehicle in a parking space, the storage of data in that apparatus and the wireless transmission of that data to a data collection apparatus (DCA) and the indication by that device to an operator of identified instances of vehicle overstay in a parking space. The DCA may be portable and may retrieve data from the DA whilst the DCA is located in a moving vehicle. The wireless retrieval of data from the DA may be performed in response to receipt of a wireless wake-up signal from a DCA.
In earlier periods of time, the DA was referred to as a vehicle detection unit (VDU) or an in-ground unit (IGU). In earlier periods of time, the DCA was referred to as a drive-by enforcement vehicle (DEV) or the in-vehicle unit (IVU) and may consist of a handheld unit (HHU) and a transient middle tier (TMT) which is a belt-worn device which communicates with the HHU by Bluetooth.
VMS has brought a proceeding in this Court against SARB Management Group Pty Ltd (t/a Database Consultants Australia) (SARB) and the City of Melbourne (CoM) for relief in relation to alleged infringements of the patents.
The claim by VMS against SARB is that it has directly and indirectly infringed claims in the First Patent and claims in the Second Patent by its conduct in connection with vehicle detection sensors, systems and methods known as PinForce. There are three versions of SARB’s PinForce Sensors, PinForce Systems and PinForce Methods. The First PinForce Sensor and First PinForce System was made, sold, used and kept by SARB and the subject of authorisation by SARB to local government councils to use, between approximately October 2007 and December 2016 (PinForce Version 1). Between approximately January 2016 and December 2016, PinForce Version 1 was progressively upgraded to the Third PinForce Sensor and Third PinForce System.
The Second PinForce Sensor and Second PinForce System was made, sold, used and kept by SARB and the subject of authorisation by SARB to local government councils to use, between approximately November 2014 and December 2016 (PinForce Version 2). Between approximately November and December 2016, PinForce Version 2 was progressively upgraded to the Third PinForce Sensor and Third PinForce System.
The Third PinForce Sensor and Third PinForce System was made, sold, used and kept by SARB and the subject of authorisation by SARB to local government councils to use from approximately December 2014 (PinForce Version 3).
VMS seeks declarations, injunctions, orders for delivery up, damages or an account of profits and additional damages under s 122(1A) of the Patents Act 1990 (Cth) (the Act) against SARB.
The relief which VMS seeks against CoM is similar, although the relief is based on claims of direct infringement by CoM.
On 6 April 2020, the Court made the following orders in this proceeding:
1.Pursuant to r 30.01 of the Federal Court Rules 2011 (Cth), the quantum of any pecuniary relief be heard and determined separately from, and after, the determination of all issues of liability for infringement and patent validity.
2. For the avoidance of doubt:
(a)the issues of liability for infringement include all questions of liability for authorisation of any infringement, of liability for additional damages and any question of innocent infringement under s 123 of the Patents Act 1990 (Cth);
(b)the issues of quantum include the quantum of any additional damages and the allegations of double-recovery that are pleaded in paragraphs 10(b) and 11(b) of the First Respondent’s Defence filed 28 February 2020 and paragraphs 18(d) and 19(e) of the Second Respondent’s Defence filed 28 February 2020.
With respect to paragraph 2(a) of the orders, the following matters should be noted. The authorisation of infringements are actionable by reason of s 13 of the Act and VMS’s case is that SARB has authorised local government councils to use the PinForce Sensors and the PinForce Systems and that SARB has, in Australia, authorised other persons to use the PinForce Sensors and the PinForce Systems in one or more methods for identifying overstay of a vehicle in a parking space. As I have said, the claim for additional damages is made under s 122(1A) of the Act and is made against both respondents and under the orders, the Court is to determine liability for additional damages at this stage, but the quantum thereof (assuming liability for additional damages is established) is to be determined at a later stage. With respect to innocent infringement under s 123 of the Act, that is a basis upon which a Court may refuse relief by way of damages or an account of profits. The defence was raised by CoM in its Amended Defence, but it was not pursued by CoM in closing submissions and need not be considered any further.
With respect to paragraph 2(b) of the orders, the following matters should be noted. The allegations of double recovery are made by both SARB and CoM. The allegations are based on a Deed of Release dated 18 June 2014. SARB alleges in its Further Amended Defence that in relation to the PinForce Sensors and PinForce Systems, VMS has already been compensated under the Deed of Release for loss and damage alleged to arise from the supply or use of the PinForce Sensors and PinForce Systems which were sold or supplied by SARB prior to 9 May 2013, “including in respect of allegations arising from the use of those PinForce Sensors and PinForce Systems after that date”. SARB advances a similar plea in response to the alleged infringement of PinForce Methods. CoM advances equivalent pleas in its Amended Defence. The issue of double recovery is, like the quantum of additional damages (assuming liability for additional damages is established), to be determined at a later stage.
SARB has filed a Notice of Cross-Claim in which it seeks orders from the Court under s 138(3) of the Act revoking the First Patent and the Second Patent. SARB did not press in its closing submissions all of its pleaded grounds of invalidity.
The infringement issues of which there were four include issues of construction.
The first issue raises the meaning of “wake-up signal” in certain claims in the patents and whether PinForce Version 1 and PinForce Version 2 used a wake-up signal.
The second issue raises the construction of certain claims in the First Patent and whether the claims include a method or system where the determination of vehicle overstay is made by the DCA instead of the DA, it being accepted that in the case of PinForce Version 3, all capability of determining vehicle overstay in the DA has been removed and vehicle overstay is determined by the DCA.
The third issue raises a question as to the infringing acts for which SARB is liable because it has authorised those acts, or because it is a joint tortfeasor in relation to these acts. It is also necessary to consider in this context the construction of the Deed of Release dated 18 June 2014.
The final issue is whether SARB and CoM are liable for additional damages under s 122(1A) of the Act.
The grounds of invalidity which were pursued by SARB in its closing submissions are as follows:
(1)In relation to both patents, a failure to describe in the complete specification the best method known to VMS of performing the invention (s 40(2)(a));
(2)In relation to both patents, a failure by VMS to describe the invention fully (s 40(2)(a));
(3)In relation to both patents, a claim that VMS was not the inventor, or the sole inventor, of the invention and did not derive title from the inventor under s 15 of the Act and is not entitled to the First Patent or the Second Patent and it is just and equitable that the patents be revoked under s 138(3) of the Act;
(4)In relation to both patents, and in respect of those claims that do not involve the use of wake-up signals (i.e., claims 1 and 6–10 (to the extent they depend on claim 1) and 30–32 of the First Patent and claims 1–25 and 27–29 of the Second Patent), the claims are not fairly based on the matter described in the specification (s 40(3));
(5)In relation to both patents, the “invention” lacks an inventive step having regard to common general knowledge as it existed in the patent area before the earliest priority date of the claims (s 18(1)(b)(ii)). In relation to this ground, SARB relies only on common general knowledge and does not rely on any information of the kind identified in s 7(3) of the Act;
(6)In relation to the First Patent and if, contrary to earlier contentions made by SARB, claims 21–23 and 28–32 encompass a system in which the DCA determines vehicle overstay, then the First Patent, or at least those claims in the First Patent, should be revoked because:
(a)the Patent or those claims were obtained by false suggestion or misrepresentation (s 138(3)(d)); and
(b)they lack clarity and therefore do not comply with s 40(3); and
(c)they lack definition and therefore do not comply with s 40(2)(b).
CoM adopted SARB’s submissions in relation to infringement and invalidity. CoM confined its closing submissions (written and oral) to the reasons it contends an award of additional damages should not be made against it.
The relevant version of the Act and Regulations for the purpose of this proceeding is that in force prior to the amendments made to the Act by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act) and the Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013 (No 1) (Cth).
The First Patent
The complete specification of the First Patent was published and became open for public inspection on 24 November 2005. The application for the First Patent was made on 9 May 2005 and the patent was sealed on 13 March 2008. The priority date for the claims in the First Patent is 17 May 2004. The inventor named in the First Patent is Mr Fraser John Welch.
The First Patent identifies the field of the invention as relating to parking violations and, more particularly, to the detection of vehicles that overstay a defined time interval in parking spaces.
In the section in the specification entitled “Background”, the traditional methods of detecting vehicles that have exceeded the time limit of a parking space are described. A traditional method of placing a chalk mark on the tyre of a vehicle in a parking space and then returning at a later time to check if any of the vehicles with “chalked” tyres are still parked is described. The inefficiencies and disadvantages said to be associated with that method are identified and then a statement is made that a need thus exists for a method, an apparatus and a system that overcomes, or at least ameliorates, one or more of the described disadvantages.
In the “Summary” section in the specification, three aspects of the invention are described. Those descriptions of aspects of the invention correspond with claims 1, 11 and 21 respectively.
The first aspect is the provision of a method performed by a subterraneous DA for identifying overstay of a vehicle in a parking space. The method comprises the steps of detecting the presence of a vehicle in the parking space, processing and storing data relating to the presence of the vehicle in the parking space, determining whether the vehicle has overstayed a defined duration in the parking space, and wirelessly transmitting data relating to identified instances of overstay of the vehicle in the parking space.
The second aspect is the provision of a battery-powered apparatus for subterraneous installation for identifying overstay of a vehicle in a parking space. The apparatus comprises a detector adapted to detect the presence of a vehicle in the parking space, a processor coupled to the detector for processing and storing data received from the detector, and determining whether the vehicle has overstayed a defined duration in the parking space, a radio receiver coupled to the processor for receiving wake-up signals, and a radio transmitter coupled to the processor for transmitting data relating to identified instances of overstay of the vehicle in the parking space.
The third aspect is the provision of a system for identifying overstay of vehicles in parking spaces. The system comprises a plurality of battery-powered DAs for identifying overstay of vehicles in respective parking spaces when subterraneously installed, and a DCA for wirelessly retrieving data from the plurality of battery-powered detecting apparatuses. The DCA comprises a radio transmitter for transmitting wake-up signals to ones of the plurality of battery-powered DAs, a radio receiver for receiving data from woken-up ones of the plurality of battery-powered DAs, a memory unit for storing data and instructions to be performed by a processing unit, and a processing unit coupled to the radio transmitter, the radio receiver and the memory unit. The processing unit is programmed to process data received via the radio receiver and to indicate instances of vehicle overstay to an operator. The data relates to identified instances of vehicle overstay in the respective parking space.
The specification then contains the following passages (on p 3) which were the subject of expert evidence and of submissions by the parties:
Repeated wireless wake-up of a detection apparatus is typically performed irregularly with respect to time depending on the presence of a data collection device. Wireless retrieval of data may be performed in response to wireless wake-up of a detection apparatus. Overstay of a vehicle in a parking space may be determined at the detection apparatus by processing data received from the detector.
The data collection apparatus may be portable and may retrieve the data from the detection apparatus whilst the data collection apparatus is located in a moving vehicle. Data relating to presence of a vehicle may comprise presence duration of the vehicle in the parking space, movements of the vehicle in and out of the parking space with corresponding time-stamp information, and/or an indication of overstay of the vehicle in the parking space. Vehicle presence detection may be performed by a magnetometer that detects changes in the earth’s magnetic field caused by presence or absence of a vehicle in the parking space. The detection apparatus may be encased in a self-contained, sealed housing for subterraneous installation in a parking space. The radio transmitter and/or radio receiver may operate in the ultra-high frequency (UHF) band and may jointly be practised as a transceiver.
The specification contains nine drawings, diagrams or figures which are described in the specification.
The body of the specification states that a “small number of embodiments are described hereinafter, by way of example only, with reference to the accompanying drawings” and contains the following brief description of the drawings, diagrams or figures:
Fig. 1 is a flow diagram of a method for identifying overstay of a vehicle in a parking space;
Fig. 2 is a block diagram of a detection apparatus for monitoring presence of a vehicle in a parking space;
Fig. 3 is a block diagram of a data collection apparatus for retrieving data from one or more detection apparatuses;
Fig. 4 is block diagram of another data collection apparatus for retrieving data from one or more detection apparatuses;
Fig. 5 is a schematic diagram of a system for identifying overstay of vehicles in parking spaces;
Fig. 6 is a schematic diagram of another system for identifying overstay of vehicles in parking spaces;
Fig. 7 is a schematic diagram of a further system for identifying overstay of vehicles in parking spaces;
Fig. 8 is a flow diagram of a method of operating a detection apparatus according to an embodiment of the present invention; and
Fig. 9 is a flow diagram of a method of operating a collection apparatus according to an embodiment of the present invention.
Figures 1, 2, 4, 5, 6, 8 and 9 are as follows:
A detailed description of the methods, apparatuses and systems largely by reference to the figures, extends over approximately 10 pages in the specification. In light of the issues between the parties, it is necessary to set out the following passages:
In relation to Figure 1
Page 4
Fig. 1 is a flow diagram of a method for identifying overstay of a vehicle in a parking space. Presence of a vehicle in the parking space is detected using a detection apparatus in step 110. Data relating to presence of the vehicle is processed and stored in the detection apparatus at step 120. The detection apparatus is wirelessly woken-up at step 130 and at least a portion of the data is retrieved from the detection apparatus at step 140. Overstay of the vehicle in the parking space is indicated based on the retrieved data at step 150.
In relation to Figure 2
Fig. 2 is a block diagram of an apparatus 200 for monitoring presence of a vehicle in a parking space. ….
Page 5
The radio receiver 240 and radio transmitter 250 are practised as a 433 MHz ultra-high frequency (UHF) radio transceiver for transmitting and receiving radio signals to and from a data collection apparatus, respectively. Various UHF transceivers may be practised such as the Micrel MICRF501 transceiver, which requires to be turned on for approximately 1ms before RF carrier energy can be detected. However, persons skilled in the art would readily understand that other types of transmitters, receivers or transceivers may be practised such as low frequency (LF) transceivers. Other UHF frequencies may also be practised such as in frequency bands commonly used for low powered devices, including 868 MHz, 915 MHz and 2.4 GHz.
The battery 260 comprises a lithium manganese dioxide (LiMnO2) battery, which may be capable of providing the apparatus 200 with 5 to 10 years of continuous operation. Again, persons skilled in the art would readily understand that various other battery types may be practised in place of a LiMnO2 battery.
Page 6
The apparatus 200 generally operates in a low-power mode while detecting vehicle movements and presence in a corresponding parking space, which may be practised on a continuous or periodic (e.g., interrupt driven) basis to conserve battery life. Although the radio receiver 240 of the apparatus 200 consumes a small amount of power (relative to other radio receivers), the radio receiver 240 is only turned on for the shortest possible time duration at regular intervals to detect the presence of a data collection apparatus. At other times, the radio receiver 240 is turned off to conserve battery life.
…
In one embodiment, the apparatus 200 determines and maintains three primary types of information:
•Current Status
The current status of the parking space in terms of vehicle presence (i.e., present or not present) and the amount of time the space has remained in the present state.
•Historical Vehicle Movements
Page 7
A record of each vehicle movement in the parking space including the date and time of the movement.
•Overstay Situation
Detected when a vehicle remains in said parking space for a duration longer than a defined time interval.
The apparatus 200 may optionally be programmed with information relating to the hours of operation and parking time limits that apply to an associated parking space based on the time of day and day of week. Decisions concerning overstay can thus be made by the apparatus 200 based on different time limits that may apply to the parking space at different times.
Information may also be downloaded to the apparatus 200 using a radio receiver in the apparatus 200. The same radio receiver as used for receiving wake-up signals or a separate radio receiver may be used for this purpose. The downloaded information may comprise, but is not limited to:
•application firmware for the apparatus 200,
•a table of operating hours and time limits (time of day and day of week) applicable to an associated parking space,
•operating parameters for the apparatus 200, and
•information for updating or synchronising the real-time clock with a more accurate real-time source.
Alternatively, decisions relating to vehicle overstay can be made by a data collection apparatus that collects data from the apparatus 200 via a radio communication link rather than by the apparatus 200.
…
In relation to Figure 4
Page 9
A data collection apparatus transmits a wake-up signal (e.g., RF carrier followed by a defined message) and listens for valid responses from detection apparatuses. If no response is received from a detection apparatus, the data collection apparatus repeatedly transmits the wake-up signal.
…
In relation to Figure 6
Page 10
Fig. 6 is a schematic diagram of another system for identifying overstay of vehicles in parking spaces. Fig. 6 shows detection apparatuses 612, 622, … 662 installed in parking spaces 610, 620, …, 660, respectively. Vehicles 624 and 644 are parked in parking spaces 620 and 640, respectively. Detection apparatuses 622 and 642 are shown in radio communication with a data collection device 680 by means of jagged lines 672 and 674, respectively. The data collection device 680 may be of fixed location remote from the parking spaces 610 620, …, 660 or may comprise a hand-held portable apparatus carried by a pedestrian enforcement officer.
…
In relation to Figure 8
Page 11
Fig. 8 is a flow diagram of a method of operating a detection apparatus such the apparatus 200 in Fig. 2. A cycle of operation begins at step 810. After a wait period of duration t1 at step 820, the radio receiver is turned on at step 830. After a further wait period of duration t2 at step 840, for the radio receiver to stabilise, the received radio frequency signal strength (RSSI) is measured at step 850. At step 860, a determination is made whether the signal strength of a detected RF carrier is larger than a defined threshold. If an RF carrier of sufficient signal strength is detected (Y), a determination is made at step 870 whether the RF carrier relates to a data collection apparatus. If a data collection apparatus is detected (Y), a communications session between the detector apparatus and the data collection apparatus occurs at step 880. Such a session typically involves transmission and reception by both the detector apparatus and the data collection apparatus. The radio receiver and transmitter are turned off at step 890 and a new operation cycle begins at step 810.
If an RF carrier of sufficient signal strength is not detected (N), at step 860, the radio receiver is turned off at step 890 and a new operation cycle begins at step 810.
If a data collection apparatus is not detected (N), at step 870, the radio receiver is turned off at step 890 and a new operation cycle begins at step 810.
The duration t2 is determined according to the type of radio receiver used and is typically of the order of 1 millisecond. Setting the duration t1 to 250 milliseconds implies an on:off duty cycle of 1:250. A typical low-power receiver may consume 5 to 10mA in receiver mode and the average power consumption of the data collection apparatus detection process is thus 20 to 40 µA.
Again, in light of the issues between the parties, it is necessary to set out the following claims in the First Patent:
1.A method performed by a subterraneous detection apparatus for identifying overstay of a vehicle in a parking space, said method comprising the steps of:
detecting presence of a vehicle in said parking space;
processing and storing data relating to presence of said vehicle in said parking space;
determining whether said vehicle has overstayed a defined time duration in said parking space; and
wirelessly transmitting data relating to identified instances of overstay of said vehicle in said parking space.
2.The method of claim 1, wherein said step of wirelessly transmitting is performed in response to receipt of a wireless wake-up signal.
3.The method of claim 2, wherein wireless wake-up signals are received irregularly with respect to time.
…
8.The method of claim 1 or claim 2, comprising the further step of determining an overstay duration of the vehicle in said parking space and storing a record thereof.
…
11.A battery-powered apparatus for subterraneous installation for identifying overstay of a vehicle in a parking space, said apparatus comprising:
a detector adapted to detect presence of a vehicle in the parking space;
a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine whether said vehicle has overstayed a defined time duration in said parking space;
a radio receiver coupled to said processor for receiving wake-up signals; and
a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space.
…
21.A system for identifying overstay of vehicles in parking spaces, said system comprising:
a plurality of battery-powered detection apparatuses for identifying overstay of vehicles in respective parking spaces when subterraneously installed; and
a data collection apparatus for wirelessly retrieving data from said plurality of battery-powered detection apparatuses, said data collection apparatus comprising:
a radio transmitter for transmitting wake-up signals to ones of said plurality of battery-powered detection apparatuses;
a radio receiver for receiving data from woken-up ones of said plurality of battery-powered detection apparatuses;
a memory unit for storing data and instructions to be performed by a processing unit; and
a processing unit coupled to said radio transmitter, said radio receiver and said memory unit;
said processing unit programmed to process said data received via said radio receiver and to indicate incidences of vehicle overstay to an operator;
said data relates to identified instances of vehicle overstay in a respective parking space.
22.The system of claim 21, wherein said data is received from one of said battery-powered detection apparatuses in response to receipt of a wake-up signal transmitted from said data collection apparatus.
23.The system of claim 22, wherein said data collection apparatus is portable.
…
28.The battery-powered apparatus of claim 11, wherein said radio receiver is only turned on to receive said wake-up signals for short durations to conserve power in said battery-powered detection apparatus.
29.The method claim 1, comprising the further step of selectively enabling receipt of said wake-up signal for short durations to conserve power in said subterraneous detection apparatus.
30.A method performed by a subterraneous detection apparatus for identifying overstay of a vehicle in a parking space, said method substantially as herein described with reference to an embodiment shown in the accompanying drawings.
31.A battery-powered apparatus for subterraneous installation for identifying overstay of a vehicle in a parking space, said apparatus substantially as herein described with reference to an embodiment shown in the accompanying drawings.
32.A system for identifying overstay of vehicles in parking spaces, said system substantially as herein described with reference to an embodiment shown in the accompanying drawings.
The Second Patent
The complete specification for the Second Patent was published and became open to the public for inspection on 11 August 2011. The application for the patent was made on 21 July 2011 and the patent was sealed on 4 February 2016. The priority date for the claims in the Second Patent is (as with the claims in the First Patent) 17 May 2004. The inventor named in the Second Patent is Mr Fraser John Welch.
The Second Patent describes the invention in very similar terms to the description of the invention in the First Patent. The different consistory clauses in the Second Patent reflect the different language of the claims. The nine drawings, diagrams or figures in the Second Patent are identical to the nine drawings or figures in the First Patent.
Again, in light of the issues between the parties, it is necessary to set out the following claims in the Second Patent:
1.A method for identifying vehicles that overstay a parking time limit associated with a parking space, said method comprising the steps of:
detecting presence of a vehicle in said parking space using a battery-powered apparatus encased in a self-contained, sealed housing;
processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space;
determining from said stored data by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed said parking time limit associated with said parking space;
detecting presence of a data collection apparatus within wireless communication range of said detection apparatus; and
when presence of said data collection apparatus is detected, wirelessly transmitting from said battery-powered apparatus encased in a self-contained, sealed housing, data relating to an identified instance of said vehicle overstaying said parking time limit associated with said parking space.
…
10.A battery-powered apparatus for identifying vehicles that overstay a parking time limit associated with a parking space, said apparatus comprising:
a detector adapted to detect presence of a vehicle in said parking space;
a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a parking time limit associated with said parking space;
a radio receiver coupled to said processor for receiving radio signals from a data collection apparatus; and
a radio transmitter coupled to said processor for transmitting data relating to identified instances of said vehicles overstaying said parking time limit associated with said parking space;
wherein said battery powered apparatus is encased in a self-contained, sealed housing.
…
25.A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of:
detecting presence of a vehicle in said parking space using a battery-powered apparatus encased in a self-contained, sealed housing;
processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space;
determining from said stored data by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and
wirelessly transmitting, from said battery-powered apparatus encased in a self-contained, sealed housing, data relating to an identified instance of overstay of said vehicle in said parking space.
26.An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising:
a detector adapted to detect presence of a vehicle in the parking space;
a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a defined time duration in said parking space;
a radio receiver coupled to said processor for receiving wake-up signals; and
a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and
a battery for providing power to said detector, processor, radio receiver, and radio transmitter;
wherein said apparatus is encased in a self-contained, sealed housing.
27.A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of:
detecting presence of a vehicle in said parking space using a battery-powered apparatus;
processing and storing, in said battery-powered apparatus, data relating to presence of said vehicle in said parking space;
determining from said stored data by said battery-powered apparatus and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and
wirelessly transmitting, from said battery-powered apparatus, data relating to an identified instance of overstay of said vehicle in said parking space.
28.An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising:
a detector adapted to detect presence of a vehicle in the parking space;
a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a defined time duration in said parking space;
a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and
a battery for providing power to said detector, processor, and radio transmitter;
The Decision of this Court in 2013
VMS was the registered owner of Innovation Patent No 2010101354 which bears the title “Method, apparatus and system for parking overstay detection”. The Innovation Patent was certified on 14 January 2011. The complete application for the patent was filed on 2 December 2010 as a divisional application of Patent Application No. 2008200089 (the Parent Application). The Parent Application was filed on 8 January 2008 as a divisional application of the First Patent. The Innovation Patent expired on 9 May 2013.
VMS instituted a proceeding in this Court against SARB alleging that the supply of SARB’s VDU known as the PinForce Sentinel VDU which was used in a method for detecting the overstay of a vehicle in a parking space, infringed the claims in the Innovation Patent. The Court upheld the validity of the Innovation Patent and found that the claims had been infringed by SARB (Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; (2013) 101 IPR 496 (VMS 2013)).
A construction issue resolved by the Court in VMS 2013 was whether the PinForce Sentinel VDU had a radio receiver for receiving wake-up signals within claim 2 of the Innovation Patent. Claim 2 of the Innovation Patent and claim 26 of the Second Patent are in identical terms. The Court described the PinForce Sentinel VDU in detail. The Court found that it infringed claim 2 of the Innovation Patent.
As I have said, an issue arises in this proceeding as to the meaning of “wake-up signal” in claims in the First Patent and the Second Patent and whether PinForce Version 1 and PinForce Version 2 wirelessly transmits data in response to receipt of a wireless wake-up signal. VMS filed a Reply in this proceeding in which it alleged that by reason of the findings in VMS 2013, an estoppel in relation to that issue arose against SARB. The plea of issue estoppel is no longer pressed by VMS. VMS now submits that the findings in VMS 2013 are highly persuasive.
The decision in VMS 2013 is relevant in another respect. In this proceeding, SARB contends that for the purposes of claims 1, 6–10 (insofar as they depend on claim 1) and 30–32 of the First Patent and claims 1–25 and 27–29 of the Second Patent, there is no real and reasonably clear disclosure of a system/apparatus/method in which the DA communicates with the DCA without the aid of wake-up signals and, in those circumstances, those claims are not fairly based. VMS contends that a “materially identical argument” was put to this Court in VMS 2013 and rejected by the Court.
There was an appeal to the Full Court of this Court against the orders made in VMS 2013 and the appeal was heard. However, the proceeding was resolved before judgment was delivered when VMS and SARB entered into the Deed of Release dated 18 June 2014.
The Infringement Issues
The infringement issues raise issues as to the proper construction of claims in the patents. The principles of claim construction are well established and are not in dispute in this case. In the circumstances, it is sufficient to set out the statement of those principles by the Full Court of this Court in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155; (2005) 65 IPR 86 (at [67]):
(i)the proper construction of a specification is a matter of law: Décor Corp 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 Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; 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 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 Corp 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] 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 485-486; 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 485–486.
Issue 1
The first issue raises the meaning of “wake-up signal” in certain claims in the patents and whether PinForce Version 1 and PinForce Version 2 used a wake-up signal.
A wake-up signal is referred to in two contexts in the First Patent. First, it is referred to in the context of a step being performed in response to receipt of a wireless wake-up signal, that step being the wireless transmission of data relating to identified instances of overstay of a vehicle in a parking space as in claim 2 of the First Patent. The second is as an integer of the DA being a radio receiver coupled to the processor (previously identified) for receiving wake-up signals as in claim 11 in the First Patent and claim 26 in the Second Patent.
VMS adduced evidence from Mr Tony Spirovski. Mr Spirovski is an electrical engineer. He is the sole employee or consultant of a consulting company that specialises in electronics design. He is a qualified electrical engineer who has specialised in working with sensing devices, RF (radio frequency) communications and communication devices concerned with the generation, transmission, processing, exchange and storage of data. He has had a long involvement as an independent expert witness in disputes between VMS and SARB.
SARB adduced evidence from Mr Jefferson Harcourt. Mr Harcourt has an Associate Diploma of Mechanical Engineering (Manufacturing) and a Bachelor of Engineering (Honours) in Electronics and Communication Engineering. He sets out his work history in his affidavit at considerable length. It is not necessary for me to repeat it. I accept that he has specialised knowledge in the field of electronics and communications engineering technologies.
Each expert provided lengthy affidavits dealing with the issues of infringement and invalidity. They then participated in a conference of experts in which they addressed a number of agreed questions. A joint experts’ report (JER) was prepared. The experts then gave evidence in this proceeding in a joint session of evidence over a period of three days. There was no challenge to the expertise of either witness, although SARB made a general challenge to Mr Spirovski’s evidence which I will address later in these reasons.
The experts were asked in the conference of experts to identify any points of agreement or disagreement between them regarding their understanding of the term “wake-up signal” in the claims in the First Patent and the Second Patent (being claims 2, 3, 4, 5, 11, 12, 13, 21, 22, 28 and 29 in the First Patent and claim 26 in the Second Patent) in light of the specifications of the First Patent and the Second Patent respectively.
In the JER, the experts indicated that they agreed that the term “wake-up signal” is somewhat confusing in that the processor and receiver in the DA are active in order to receive the wake-up signal. They agreed that rather, the wake-up signal acts as a keep awake signal to alert the DA to the presence of the DCA within radio communications range and that when the wake-up signal is received, the DA and the DCA engage in a communications session.
In addition to the joint observations, Mr Spirovski made the following observations. A wake-up signal within the meaning of the claims in the First Patent is a wireless radio signal that is transmitted by a transient DCA to notify a data detection apparatus that it is within radio communications range. The effect of the wake-up signal is to halt the data detection apparatus’ power-saving operating cycle which involves the processor and transceiver being in various states of activity and inactivity, and to keep the processor and radio receiver in an active state, once the DCA is within range, in order to have a communications session with the DCA.
In addition to the joint observations, Mr Harcourt made the following observations. A wake-up signal initiates change in a system’s power state from a sleep state to a run or active state. In a sleep state, the device is in, or close to, hibernation. The device may “wake” to perform certain routine tasks, and return to sleep. In the case of both patents, the “wake-up signal” is not waking the device from a typical sleep state, but rather initiates a communications session between the IGU and the HHU (TMT and HHU). The IGU is already awake as it must be awake to receive and process messages from the HHU. The wake-up signal would have been better labelled as an “initiate communications request” or “HHU beacon”, as it is not technically waking the IGU (DA) up.
The experts were also asked to address in the conference of experts any points of agreement or disagreement between them regarding whether PinForce Version 1 uses a wake-up signal as claimed in claims 2, 3, 4, 11, 12, 21, 22, 28 and 29 of the First Patent and claim 26 of the Second Patent.
In the JER, the experts indicated that they disagreed as to the signal which acts as the “wake-up signal” within the meaning of the claims in the First Patent. It followed that they disagreed as to which device is sending the wake-up signal.
Mr Spirovski expressed the opinion that the [REDACTED] informs the IGU that the TMT is within radio communications range. The effect of receiving the [REDACTED] causes the processor and transceiver in the IGU to [REDACTED]. The [REDACTED] is synonymous with the wake-up signal in the First Patent. The use of a wake-up signal in the form of a [REDACTED].
Mr Harcourt expressed the view that claim 2 of the First Patent discloses that the IGU will wirelessly transmit data in response to a wake-up signal sent by the DCA. The transfer of data is thus initiated by the DCA which sends the so-called “wake-up signal”. [REDACTED]
It is convenient to note at this point that the notion of performing a communications session is identified in Fig 8 (at step 880) and in Fig 9 (at step 950). It should also be noted that in VMS 2013 (at [79]), Yates J considered the meaning of wake-up signals within claim 2 of the Innovation Patent and said that they are:
signals that are sent wirelessly by a data collection apparatus to a detection apparatus that, upon receipt by the detection apparatus, activate it to engage in a communications session with the data collection apparatus, in which the detection apparatus wirelessly transmits data relating to identified instances of overstay of a vehicle in a parking space.
VMS submits that the following matters are common ground between it and SARB as to the operation of PinForce Version 1. First, PinForce Version 1 has a battery-powered DA that identifies overstay, by the use of a magnetic sensor, the readings of which are used to detect vehicle presence and which is coupled to a microprocessor in a module that includes, inter alia, a radio transceiver. [REDACTED].
In VMS 2013, the Court set out the process in the case of the PinForce Sentinel VDU which takes place when the DA attempts to communicate with a TMT. The Court’s description was relied on by VMS in this case although, at the same time, I did not understand VMS to dispute the description contained in SARB’s outline of closing written submissions which is set out below (at [63]). The description of the process given by the Court in VMS 2013 (at [90]) is as follows:
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED].
In VMS 2013, the Court held that SARB’s PinForce Sentinel VDU possessed all of the essential features of claim 2 in the Innovation Patent.
Mr Stephen Toal is the Director of Development at SARB and he is one of three main shareholders in the company, including as he put it, through entities controlled by him. He has approximately 37 years’ experience in software development, “working primarily for system vendors developing and supplying off-the-shelf systems and consulting to large corporate clients”. His work history includes leading SARB’s design team in developing the “PinForce Sentinel” vehicle detection and parking management system from 2006 to 2012. Mr Toal gave evidence in this case as he had in VMS 2013.
SARB set out a description of the process in its outline of closing written submissions on infringement. That description is based on the evidence of Mr Toal and various documents. It is an accurate description of the process and, as I have said, I did not understand VMS to dispute that that is the case. It is as follows:
[REDACTED]
[REDACTED]
REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
[REDACTED]
(Footnotes omitted.)
VMS submits in this case that while Mr Toal provides additional evidence of the information contained in the [REDACTED] and how the communications session is established between the DA and the DCA when there is a violation or pending violation, neither of those matters should lead to a different conclusion in this case from the conclusion reached by the Court in VMS 2013. VMS makes the point that the information provided in the [REDACTED] from the DA was not identified with any precision in VMS 2013. In his evidence in re‑examination in VMS 2013, Mr Toal said that the key piece of information was the reason for connecting. He said that there was also other information about how much parking event data has been collected, and other fields. He said:
I don’t recall all of them off the top of my head.
Mr Toal said he believed it was the information set out in the VDU functional specification.
In his evidence before this Court, Mr Harcourt agreed that the [REDACTED]. He agreed that while some information was included in the [REDACTED].
Mr Spirovski did not consider that the [REDACTED].
Mr Harcourt expressed the opinion that Mr Spirovski’s opinion was incorrect and that it was flawed by reason of his consideration of the Zigbee protocol. In response, Mr Spirovski said the following:
This has nothing to do with the Zigbee protocol. [REDACTED]
Mr Spirovski was cross-examined at some length about the extent to which he had relied on his knowledge of the Zigbee protocol in formulating his opinion. The Zigbee protocol is a global standard that relates to wireless networking and it relates to the products which have a similar functionality to SARB’s products. Mr Spirovski described the Zigbee protocol as a framework that specifically relates to the construction of mesh networks and low power devices and it is targeted towards a particular class of device. He agreed that a fair way to describe it was that it provides the “broad communications architecture”. Mr Spirovski was taken through paragraphs in his affidavit which referred to the Zigbee protocol. He expressed a number of opinions in para 125 of his first affidavit based on his knowledge of the Zigbee protocol and two product specifications, specification 1.0 and specification 2.0. He was taken to Mr Toal’s evidence about the communications protocol actually adopted by SARB. He was asked to assume that Mr Toal’s evidence is correct. He was also taken to the Verified Product and Method Description verified on 24 April 2020 (VPMD). He agreed that some of the opinions he expressed were incorrect on the assumption that Mr Toal’s description of how the process worked was correct. For example, he gave the following evidence:
MR CAINE: So that lays to rest, does it not, the evidence you give about what might be a logical design choice in 127. It’s simply not a feature of the version 1 SARB product.
MR SPIROVSKI: Yes. It’s – the logic aspect of it has to do with needlessly sending additional data. But that’s – that’s a logical perspective based on how I would design a system. If Mr Toal’s evidence says it’s done otherwise, then it’s done otherwise.
The criticism of Mr Spirovski’s approach went further than this and I deal with the additional criticisms of Mr Spirovski’s approach below. VMS submits that SARB’s criticism of Mr Spirovski in terms of his reliance on the Zigbee protocol and the functional specifications “goes nowhere” because Mr Spirovski has based his opinions, or has also based his opinions, on more fundamental considerations.
VMS submits that the [REDACTED]. VMS submits that I should reach the same conclusions as the Court did in VMS 2013.
As I have already said, the Court in VMS 2013 noted that [REDACTED]
[REDACTED].
The Court then noted that the evidence before the Court was unclear as to precisely what part of the overstay information was included in the [REDACTED]
[REDACTED]
The key point put by SARB in response to VMS’s submissions was expressed by it in various ways. It submits that it is the [REDACTED] containing the connection information which initiates the communications between the DCA and the DA. It submits that the DA initiates communications with the DCA. It submits that the [REDACTED] is in and of itself a communication that contains useful data, including overstay information and it is the initial transmission in the sequence of transmissions and responses. SARB submits that the DA and the DCA have already engaged in a communications session before the DCA sends its response.
SARB submits that the decision in VMS 2013 should not be followed because the Court in that case did not have the benefit of Mr Toal’s evidence about the connection information contained in the [REDACTED] and details of how the communications session is established between the DA and the DCA and details of how the PinForce Version 1 departed from the [REDACTED]. SARB submits that a proper understanding of these matters is essential to the correct conclusion that the PinForce Version 1 did not use a wake-up signal as claimed. SARB refers to Fig 8 and the significance of performing a communications session and submits that the crucial point is, in effect, which of the two devices initiates the communications session. SARB submits that that is the [REDACTED] containing the connection information which initiates the communications session.
SARB submits that the wake-up scheme of the invention as revealed in the claims is that it is the DCA which initiates the communications session and that that is not the case with the PinForce Version 1. SARB refers to the significance of the communications session to the decision in VMS 2013. It submits that this Court has fresh evidence from Mr Toal and, furthermore, that the opinions of Mr Spirovski have been shown to be flawed.
In my opinion, the essence of the Court’s reasoning in VMS 2013 applies having regard to the evidence advanced in this case and, with respect, that reasoning is correct. The notion of which device initiates the communications session was a matter raised before the Court in VMS 2013. For example, in paras 45 and 46 in confidential exhibit STO1 referred to in the affidavit of Mr Toal affirmed on 22 December 2011, the following appears:
45 In [13(c)] Mr Spirovski also states:
[REDACTED];
46This is also incorrect. The VDU [REDACTED].
Assuming fraud is not present and, as I have said, fraud is not alleged in this case, it is not sufficient to make out the ground of false suggestion or misrepresentation to prove simply that a false suggestion or misleading statement was made and nothing else. The Full Court made this clear in Ranbaxy in the following passages (at [135]–[137]):
135The ground of false suggestion or misrepresentation must involve some misleading or deception of the Commissioner or the Commissioner’s delegate, being the person who makes the grant. To establish the ground, there must be a finding that the Commissioner or the Commissioner’s delegate was in some way misled or deceived by the suggestion or representation in question and that being so misled or deceived contributed to or caused the decision to grant the patent.
136The Commissioner was a party to the proceeding but took no substantive part in the proceeding. The Commissioner may have taken the view that Ranbaxy was prosecuting the alleged grounds of invalidity with sufficient vigour for the Commissioner not to be involved. Ranbaxy adduced no evidence as to the way in which the alleged false suggestions or misrepresentations operated on the decision making process of the Commissioner. Where it is alleged that a patent was obtained on or by false suggestion or misrepresentation, it is relevant, although not decisive, that the Commissioner has made no complaint about being misled or deceived.
137In the absence of an allegation of fraud, which involves an examination of the state of mind of the patent applicant, it is not sufficient to make out the ground of false suggestion or misrepresentation to prove simply that a false or misleading statement was made and nothing else. That is to say, even if a suggestion or representation is shown to be false or misleading, that, of itself, is not sufficient reason to draw an inference that the suggestion or representation contributed to the decision to grant the patent.
A submission about the meaning and effect of a piece of prior art will not necessarily involve a false suggestion or misrepresentation even where it transpires that it was wrong unless, it seems, it can be said that there was no basis for the submission (ICI Chemicals at [91]).
The Court in ICI Chemicals made it clear that where good faith is not in issue, it is inappropriate to apply a presumption that the misrepresentation actually misled. The Court said (at [92]):
… We think it is relevant also to bear in mind that the examiner must be taken to have become thoroughly familiar with the specification and claims the subject of Lubrizol’s application; the examiner should also be taken to have become familiar with at least the abstract but, we should think, more likely the complete specification, of the Japanese patent. A reaction more likely, we should think, than immediate acceptance of what was said on Lubrizol's behalf was a further consideration, by the examiner, of both. After all, where good faith is not in issue it is inappropriate to apply any presumption that the misrepresentation actually misled. …
The onus is on SARB to establish this ground of invalidity. Even if it be assumed that there was a false suggestion or misrepresentation, there is no presumption that the Commissioner was misled. It is true that a sufficient causal link may be inferred if the representation was objectively likely to contribute to the grant of the patent and the patent was, in fact, granted. However, I am not satisfied that in this case an inference of a sufficient causal link should be drawn, having regard to the course of the correspondence. For example, as VMS pointed out in its written submissions, there were a number of bases upon which the objections to the First Patent did not succeed, not just the scope of claims 21–23 and 28–32. The Spruson & Ferguson letter of 24 May 2007 focussed primarily on claims 1, 5, 10, 11, 15, 16 and 26 and the letter of 2 October 2007 focused primarily on claims 1, 10 and 11.
The false suggestion and misrepresentation ground of invalidity is rejected.
Claims 21–23 and 28–32 of the First Patent lack clarity and fail to define the invention
SARB’s case is that if claims 21–23 and 28–32 in the First Patent encompass a system, apparatus or method which does not require the DA to make the overstay determination, then the claims are not clear and do not define the invention because they do not set out how the identification of overstay is to be determined. Section 40(3) provides, inter alia, that claims in a complete specification must be clear and s 40(2)(b) provides that the claim or claims must define the invention.
SARB pleaded an additional ground of lack of clarity in relation to claim 29 and that related to the reference in the claim to a wake-up signal, but that ground was not pursued in closing submissions.
SARB submits that it is common ground between the experts that the specification provides no information about how the identification of overstay is to be determined. For example, Mr Harcourt said that the difficulty with overstay being determined by or in the DCA is that this possibility “is not discussed or described anywhere else, and there is insufficient information about how a system configured in this way works”. For his part, although Mr Spirovski stated in his oral evidence that the DCA would make the decisions in exactly the same way as the DA using the same equations, he agreed that there was “no discursive account of how that might be done using the data collection apparatus”.
SARB submits that insofar as VMS relies on the omnibus claims which use the words “substantially as herein described”, they will generally be restricted to the preferred embodiment or an embodiment substantially the same as the preferred embodiment and that difficulties in meeting the requirement of clarity may arise where more than one preferred embodiment is described in the specification (Britax Childcare v Infa-Secure at [29] and [31]).
It is important to remember that a lack of clarity is concerned with the certainty surrounding the scope of the monopoly claimed. A skilled addressee must be able to ascertain whether what he or she proposes to do falls within the ambit of the relevant claim. There is a further relevant point and that is that a claim will not fail for lack of clarity if it identifies a workable standard suitable to the intended use. I am unable to see how it can be said the claims lack clarity. Once construed in the manner I have described, there would be no difficulty for the skilled addressee to understand the boundaries of the claims.
A similar conclusion follows in the case of the ground of alleged invalidity that the claims do not define the invention. In General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457, the Court of Appeal said (at 515–516):
It is clear in our judgment that the question whether the patentee has sufficiently defined the scope of his claims is to be considered in relation to the facts of each case, that allowance is to be made for any difficulties to which the circumstances give rise, and that all that is required of the patentee is to give as clear a definition as the subject matter admits of. It is also clear in our judgment that, while the court is to have regard to all the relevant facts, the issue of definition is to be considered as a practical matter and little weight is to be given to puzzles set out at the edge of the claim which would not as a practical matter cause difficulty to a manufacturer wishing to satisfy himself that he is not infringing the patent. We accept also that definition of the scope of a claim is not necessarily insufficient because cases may arise in which it is difficult to decide whether there has been infringement or not provided the question can be formulated which the court has to answer in deciding the issue of infringement.
A lack of definition will not be established unless a claim is “incapable of resolution by a skilled addressee by the application of common sense and common knowledge” (Innovative Agriculture Products Pty Ltd v Cranshaw (1996) 35 IPR 643 at 666; PhotoCure ASA v Queen’s University at Kingston [2005] FCA 344; (2005) 216 ALR 41; (2005) 64 IPR 314 at [117] per Merkel J). In my opinion, that cannot be said of the claims in this case.
The lack of clarity and lack of definition grounds of invalidity are rejected.
Conclusions
The principal conclusions with respect to the infringement issues in this case are as follows:
(1)The PinForce Version 1 (and PinForce Version 2) infringes claims 2, 3, 4, 5, 11, 12, 13, 21, 22, 28 and 29 of the First Patent and claim 26 of the Second Patent and the contention by the first respondent that PinForce Version 1 does not involve the use of a wake-up signal or provide for data to be transmitted when a DCA is detected is rejected;
(2)Claim 21 of the First Patent includes a system in which vehicle overstay is determined by the DCA;
(3)The acts of service, maintenance, firmware upgrade and/or other assistance do not give rise to liability, assuming as I take to be the case, those acts were performed pursuant to lawfully binding contracts entered into before the beginning of the limitation period because there would be no power to prevent the use and no procuring, inducing or acting in concert in the relevant sense;
(4)(a) With respect to the applicant’s claim for additional damages against the first respondent, an award of additional damages is justified with respect to infringements after the decision in VMS 2013, but only insofar as the infringements involve PinForce Version 1 and PinForce Version 2; and
(b)With respect to the applicant’s claim for additional damages against the second respondent, the claim is dismissed.
These conclusions must be read in the context of these reasons and be reflected in the orders to be made.
The first respondent/cross-claimant’s cross-claim is to be dismissed.
The applicant is to bring in draft minutes of order reflecting the conclusions in these reasons. I will then hear from the parties as to the terms of the orders.
I certify that the preceding six hundred and seventy-two (672) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Besanko. Associate:
Dated: 8 March 2023
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