Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd

[2017] APO 63

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2017] APO 63

Patent Application:                   2013213708

Title:Vehicle Detection

Patent Applicant:  SARB Management Group Pty Ltd

Opponent:  Vehicle Monitoring Systems Pty Ltd

Delegate:  M. G. Kraefft

Decision Date:  15 December 2017

Hearing Date:  4 October 2017, in Canberra

Catchwords:  PATENTS – section 59 – opposition to grant of patent – vehicle detection unit providing parking overstay data in format suitable for pre-population into infringement issuing software – whether there is inventive step – whether nominated person is entitled to invention – whether specification discloses invention in manner that is clear enough and complete enough – opposition fails on above grounds – specification with omnibus claims in contravention of subsection 40(3A) – subsection 40(3A) not an available ground of opposition – opportunity to amend specification allowed.

Representation:  Counsel for the applicant:  Ms Helen Rofe QC, Ms Clare Cunliffe

Patent attorney for the applicant:  Davies Collison Cave.

Counsel for the opponent:  Mr Chris Burgess

Patent attorney for the opponent:  Mr Guy Tucker, Spruson & Ferguson.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2013213708

Title:Vehicle Detection

Patent Applicant:  SARB Management Group Pty Ltd

Date of Decision:  15 December 2017

DECISION

The claimed invention has an inventive step over the prior art cited in this opposition.

The opponent has not established that the nominated person is not entitled to the grant of a patent for the invention or, alternatively, is only entitled to the grant in conjunction with some other person.

The specification complies with subsection 40(2)(a). On the other hand, claims 25-28 contravene subsection 40(3A). While the latter is not an available ground of opposition under Section 59, the grant of a patent in this case is delayed to allow the applicant an opportunity to amend the specification.

The applicant is allowed two (2) months from the date of this decision to propose suitable amendments in respect to claims 25-28.

Costs in accordance with Schedule 8 awarded against the opponent.

REASONS FOR DECISION

BACKGROUND

1. SARB Management Group Pty Ltd (“the applicant”) filed Australian (“AU”) patent application 2013213708 on 7 August 2013.  The application is a divisional application based on AU application 2008288710 (“the parent application”).  The parent application is based on two earlier AU applications.  One is AU provisional application 2007904549.  The other is AU innovation patent 2008100796.  The earliest priority date is 23 August 2007. 

2. Application 2013213708 was advertised accepted on 4 February 2016.  Vehicle Monitoring Systems Pty Ltd (“the opponent”) filed a notice of opposition on 4 May 2016.  A statement of grounds and particulars followed on 4 August 2016.

3. The parties completed the evidentiary stages on 6 April 2017.

   APPLICABLE LAW

4. The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.  The application was filed after 15 April 2013.

5. Thus the standard of proof that applies in the present case is the balance of probabilities.  Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.

   SPECIFICATION

6. The specification describes the present invention as relating to vehicle parking compliance and in particular to automated determination of notifiable parking events.  As background, the specification indicates the difficult, costly and time-consuming nature of manual enforcement of vehicular parking regulations by parking inspectors.  For example, typical enforcement involves a parking inspector manually inspecting all restricted spaces periodically, regardless of whether vehicles are actually present.  Further, to identify a violation in a free time-limited zone requires the parking inspector to inspect the violating car at least twice, once to establish time of arrival of the car, and a second time once the permitted time period for parking has elapsed.  Even in paid metered zones, manual enforcement is inefficient as the parking inspector may fail to note an expired meter or parking voucher before the violating car departs, reducing the deterrent to infringers and denying fines revenue to the relevant body.

7. The specification ends with 28 claims.  Claims 1, 11, 20, 21 and 25-28 are independent claims.  The first four claims in this group are recited below.

   1.A vehicle detection unit (VDU) comprising:

   a magnetic sensor able to sense variations in magnetic field and for outputting a sensor signal caused by occupancy of a vehicle space by a vehicle;
   a storage device carrying parameters which define notifiable vehicle space occupancy events;
   a processor operable to process the sensor signal to determine occupancy status of the vehicle space, and operable to compare the occupancy status of the vehicle space with the parameters in order to determine whether a notifiable event has occurred, and operable to initiate a communication from the vehicle detection unit to a supervisory device upon occurrence of a notifiable event, wherein the communication includes data items pertaining to the notifiable event and communicated in a format suitable for pre-population into infringement issuing software.

   11. A method for vehicle detection by a vehicle detection unit, the method comprising:

   sensing variations in magnetic field caused by occupancy of a vehicle space by a vehicle, and outputting a sensor signal;
   retrieving from a storage device parameters which define notifiable vehicle space occupancy events;
   processing the sensor signal to determine occupancy status of the vehicle space, comparing the occupancy status of the vehicle space with the parameters in order to determine whether a notifiable event has occurred, and initiating a communication from the vehicle detection unit to a supervisory device upon occurrence of a notifiable event, wherein the communication includes data items pertaining to the notifiable event and communicated in a format suitable for pre-population into an infringement issuing device.

   20. A method for issuing a parking infringement notice, the method comprising:

   a portable device establishing a transient wireless connection with at least one fixed vehicle detection unit (VDU);
   the portable device obtaining from the VDU via the wireless connection data arising from a notifiable parking event magnetically detected by the VDU; and
   the portable device pre-populating the data into infringement issuing software and generating a parking infringement notice using the pre-populated data obtained from the VDU.

   21. A system for detecting vehicle parking infringements, the system comprising:

   a plurality of vehicle detection units (VDUs) each associated with a respective vehicle parking space and storing parameters defining notifiable vehicle space occupancy events, each VDU configured to sense variations in magnetic field caused by occupancy of the associated vehicle space and determine by reference to the parameters whether a notifiable event has occurred, and operable to communicate wirelessly including wirelessly transmitting data items pertaining to the notifiable event and communicated in a format suitable for pre-population into infringement issuing software;

   a mobile supervisory device configured to wirelessly communicate with each respective VDU when brought within range, to receive information from the VDU arising from a notifiable parking event detected by the VDU, to pre-populate received data items into infringement issuing software and to generate a parking infringement notice using the pre-populated data items obtained from the VDU.

8. Claims 25-28 are omnibus claims referring to the specification’s description and accompanying drawings. These claims would appear to contravene subsection 40(3A) of the Act, noting the insertion of that subsection as a consequence of the Raising the Bar Act (see Schedule 6, items 43 and 133(7)(d)).

   STATEMENT OF GROUNDS AND PARTICULARS

9. The statement of grounds and particulars lists three grounds of opposition.  The first ground is that the nominated person is not entitled to the grant of a patent for the invention or, alternatively, is only entitled to the grant in conjunction with some other person.  The second ground is that the invention is not a patentable invention because it does not comply with paragraph 18(1)(b), namely non-compliance with novelty and inventive step.  The third ground is that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).  That is, the complete specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, does not disclose the best method known to the applicant of performing the invention, does not end with a claim or claims defining the invention, and the claim or claims are not clear, succinct and supported by matter disclosed in the specification.  The opponent provided particulars to support each of these grounds.  At the hearing, the opponent pursued the grounds of entitlement, lack of inventive step and that the complete specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

   EVIDENCE IN SUPPORT

10. The opponent filed evidence in support from Mr Fraser Welch, Mr Tom Gladwin and Mr Tony Spirovski.

11. In statutory declarations in these proceedings, Mr Welch and Mr Gladwin referred to affidavits sworn by them and filed in proceedings between the parties in the Federal Court of Australia, Proceeding No. VID318/2012.  Those proceedings related to a divisional innovation patent based on the above-mentioned parent application.  In the present case, those affidavits accompanied the opponent’s statement of grounds and particulars. 

12. Prior to the hearing, the Patent Office issued a letter to both parties concerning the status of the affidavits as evidence in the present opposition and whether Regulation 5.23 may be applicable.  The opponent responded to that letter principally pointing out that the Welch and Gladwin declarations clearly referred to, and incorporated, the contents of each respective affidavit as evidence in support in the present opposition.  The applicant did not respond to the letter but had answered the affidavits in its evidence in answer.  At the hearing, both parties consented to the affidavits forming part of the evidence in support.  I concurred.  This was confirmed by official letter sent after the hearing.

13. In his affidavit Mr Welch identified himself as an executive director of the present opponent.  He indicated that he had been involved in the invention, design, development, manufacture, commercialisation, marketing and supply of paid parking and parking enforcement systems, including parking ticket machines, meters and vehicle detection technology, since about 1993.  Mr Welch principally described the development and trials of the opponent’s parking overstay detection system (“PODS”), dating from the early 2000s.

14. At the priority date Mr Gladwin was the manager of parking and local laws at a local council in the inner western suburbs of Melbourne.  He had responsibility for managing the council’s parking operations and enforcement.  In his affidavit Mr Gladwin indicated that he had known Mr Welch since 1992.  Mr Gladwin further described his council’s trials of PODS and his interview by a representative of the Australian National Parking Steering Group (“ANPSG”) for an article about PODS in an ANPSG journal. Mr Gladwin also described his presentation of PODS at an ANPSG conference in Perth in 2005.

15. Mr Spirovski is sole director and shareholder of a consulting company specialising in electronics design.  Since 2004 Mr Spirovski has principally been involved in the design, development and manufacture of electronic controls and assemblies, utilising micro-processors and radio-frequency (“RF”) communications technology.  He has exhibited an affidavit from the above-mentioned Federal Court proceeding in addition to direct evidence in the present opposition.  Mr Spirovski’s evidence is principally directed to comparisons of numerous elements of prior art against the presently claimed invention to conclude that variations between the prior art and the claimed invention were not real differences and made no substantial contribution to the working of the invention.

    EVIDENCE IN ANSWER

16. The applicant filed evidence in answer from Mr Sandy Del Papa, Professor Jamie Scott Evans and Mr Graham Percy McKinnon.

17. Mr Del Papa is a director of civic compliance with the applicant and a named inventor of the presently claimed invention.  His evidence is principally responsive to the affidavits of Mr Welch and Mr Gladwin.  Mr Del Papa acknowledges having communications with both Mr Welch and Mr Gladwin in respect to the opponent’s technology.  Mr Del Papa described the discussions as relating to potential commercial cooperation between the opponent and the applicant, and not to the development of new technology.  He concluded by stating that the applicant developed the claimed invention independently of the opponent’s technology, and without any contribution from the opponent.

18. Professor Evans is a professor in the Department of Electrical and Electronic Engineering at the University of Melbourne and Deputy Dean in the Melbourne School of Engineering.  He has particular expertise in wireless communications, including wireless sensor networking and signal processing.  Professor Evans’ evidence is largely responsive to Mr Spirovski’s evidence and principally describes the prior art as requiring significant further investigation, development or redesign to arrive at the claimed invention.

19. Prior to retirement Mr McKinnon had accumulated more than 20 years of experience before the priority date in the field of parking enforcement for the City of Melbourne council.  He helped to establish the ANPSG and subsequently was the Victorian representative on the ANPSG committee.  Mr McKinnon worked closely with parking technology providers to identify new technologies that may be useful in parking enforcement and frequently reviewed commercial literature on the subject.  In evidence Mr McKinnon referred to the 2005 and 2006 ANPSG conferences, in Perth and Hobart respectively, both of which he attended.  He stated that his attorney provided him with slide sets of presentations by Mr Gladwin and Mr Welch, respectively, from those conferences.  In respect to Mr Welch’s presentation, Mr McKinnon exhibited an extract from Mr Welch’s affidavit related to a demonstration of PODS at the 2006 ANPSG conference rather than a copy of any slide set.  Mr McKinnon stated that he did not specifically remember Mr Gladwin’s presentation although, having reviewed the presentation, he was aware of all the points made in the presentation.  Mr McKinnon commented that nothing stood out from the presentation as being a suggestion for further research.  Mr McKinnon further stated that he could not recall Mr Welch’s presentation let alone any specifics.

    EVIDENCE IN REPLY

20. The opponent filed evidence in reply from Mr Welch and Mr Spirovski.

21. Mr Welch indicated that he did not understand what slide set was provided to Mr McKinnon since Mr Welch’s presentation and outdoor demonstration did not comprise any slides.  In respect to Mr Del Papa’s evidence, Mr Welch stated that the single reason for contact with the applicant was to automate the process of entering data provided by PODS into an electronic ticket issuing device.  Mr Welch principally maintained that discussions between Mr Del Papa and himself related to integrating the sensor technology with the infringement issuing devices so that data fields in the infringement issuing device could be automatically populated with information known by the sensor system, thus alleviating the need for parking officers to manually enter that information.

22. Mr Spirovski’s evidence is largely responsive to Professor Evans’ evidence and principally discusses selected prior art in more detail, drawing on further disclosures therein that broadly relate to the claimed invention.

    REQUEST TO AMEND STATEMENT OF GROUNDS AND PARTICULARS

23. Approximately two weeks before the hearing date, the opponent requested an amendment of its statement of grounds and particulars.  The amendment was to introduce particulars, under the ground of patentable invention, relating to Mr Welch’s ANPSG Hobart presentation.  At the hearing, the applicant consented to the amendment being allowed.  Being satisfied that the amendment should be made (Reg, 5.16(4)), I allowed the amendment.  This was confirmed by official letter sent after the hearing.

    INVENTIVE STEP

24. Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of the relevant claim, whether that knowledge is considered separately or together with information mentioned in subsection (3).

25. Subsection 7(3) states the information for the purposes of subsection (2) is any single piece of prior art information, or 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, be reasonably expected to have combined.

26. The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:

    "The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

27. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53] (“Alphapharm”), appeared to approve of the Wellcome test.  In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative.

28. In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).

29. It may be noted that the above cases proceed on a premise that there was a problem to be solved.  Moreover it seems clear from Alphapharm that establishing that something was worthwhile or obvious to try is not sufficient to support a finding of lack of inventive step, noting also at [34] that the phrase “worthwhile to try” is not readily understood as synonymous with “obvious”. At [58]:-

    “The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.” 

1. Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base.  In Alphapharm at [41], the High Court stated:

   “The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step.  It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”

   Person Skilled in the Art

2. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980, Finkelstein J stated at [70] and [71] that the skilled addressee is the person to whom the patent is addressed and who must construe it. Such person works in the art or science with which the invention is connected or is likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. Finkelstein J further noted various descriptions given to the skilled addressee. These included the “uninventive skilled worker in the particular field” (Leonardis v Sartas No 1 Pty Ltd, (1996) 67 FCR 126) and the “person skilled in the art” (Genentech Inc v Wellcome Foundation Ltd, (1989) 15 IPR 423).

3. The opponent referred to the Federal Court decision of Yates J in Vehicle Monitoring Systems Pty Limited v Sarb Management Group Pty Ltd (No 2), [2013] FCA 395, at [61], [62] and [66]. The opponent submitted that the person skilled in the present art included a person possessing the general skills of an electrical engineer and having working knowledge of the operation of sensing devices, together with radio frequency (“RF”) communications involving the transmission of data. The opponent nominated Mr Spirovski as having specialised skill and knowledge of that kind at the priority date. In addition, the opponent stated the person skilled in the art would have a practical interest in, and knowledge of, parking enforcement practices, equipment and technology. The opponent presented Mr Gladwin as such a person. Thus the person skilled in the art in the present case may be conceptualised as a team of participants who direct their individual skills and knowledge to the field of endeavour, in this case being the detection of vehicles that overstay a defined time interval in parking spaces.

4. The applicant similarly referred to Yates J’s decision and submitted the relevant addressee was a person possessing the general skills of an electrical engineer and having working knowledge of the operation of sensing devices.  The applicant agreed that the opponent’s Mr Spirovski was such a person, as was the applicant’s Professor Evans.  The applicant disputed that Mr Gladwin, as a council parking manager, was a member of the skilled team.

5. The specification opens by indicating that the present invention relates to vehicle parking compliance and discusses the numerous problems associated with parking enforcement by manual inspection.  Consequently I would think that parking managers, inspectors or officers would be relevant persons of skill and knowledge in the present field.  The opponent’s evidence further indicates that such persons were the primary identifiers of the incompatibility problems with existing vehicle sensors and infringement management or issuing systems (for example the Gladwin affidavit at [20] and [21]).  From the applicant’s evidence, Mr McKinnon, at [11], mentioned the close working relationship between the ANPSG and parking technology providers to identify new and useful technology and to make sure that local government representatives were aware of relevant technology in the parking industry.  I conclude the person skilled in the present field would be a team of people comprising those skilled and knowledgeable in electrical engineering or communications engineering and those skilled and knowledgeable in parking enforcement.

   Common General Knowledge

6. The opponent submitted the common general knowledge landscape was altered radically when details of the opponent’s PODS were published by the ANPSG in its journal, “Making a Space”, in June 2005.  Moreover, as foreshadowed in that article, Mr Gladwin gave a presentation about PODS at the November 2005 ANPSG conference in Perth.  Mr Welch made a further presentation in the following year about PODS at the ANPSG conference in Hobart.

7. In the light of the above, the opponent reasoned that PODS plainly formed part of the common general knowledge by the priority date on the following basis.  The ANPSG is the peak body for local government on-street parking enforcement in Australia and PODS was publicly disclosed on at least three occasions in ANPSG knowledge-sharing forums through the ANSPG journal and its conferences.

8. The applicant referred to the High Court decision of Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2), [2007] HCA 21. At [55]:-

   “ ‘Common general knowledge’ was well understood as being ‘part of the mental equipment of those concerned in the art under consideration’, and Minnesota Mining had confirmed that what was ‘known or used’ in Australia was confined to common general knowledge, which was explained 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’.”

9. On this basis, the applicant submitted that dissemination of information is not enough.  Moreover it could not be said that the PODS disclosures formed part of the common general knowledge of electrical engineers or electronic engineers.  The applicant further submitted that, even for persons engaged in the parking industry, there was no basis in the evidence to assume the ANPSG presentations were common general knowledge.  Mr Gladwin and Mr Welch were not in a position to give evidence on this point due to their special knowledge of PODS.  The applicant thus suggested that, at best, at the time of the Hobart conference, the evidence indicated that one council in Melbourne was operating PODS to detect parking overstay.  There was little evidence of the use and acceptance of PODS more widely and, thus, PODS was not part of the mental equipment or background material of a person skilled in the art in Australia at the relevant time.

10. Mr Welch, as designer of PODS, and Mr Gladwin, as the conductor of the PODS trials for his council, clearly had more advantageous knowledge about PODS than the ordinary person skilled in the art.  While the opponent’s evidence indicated that the PODS presentations at the two conferences generated much interest, the opponent provided no independent corroboration, for example from readership circles or from conference delegates, that the information about PODS in a journal or at the conferences had become widely accepted such as to have been part of the mental equipment or background knowledge of persons skilled in the art generally.  On the contrary, the applicant’s Mr McKinnon, an attendee at both conferences, did not specifically remember the PODS presentations.  It may also be noted that Mr McKinnon helped to establish the ANPSG, had been closely associated with the ANPSG since its establishment and was a committee member.  As such, if the PODS disclosures in the ANPSG journal and at its conferences were as illuminating as suggested by the opponent, then it would be surprising if Mr McKinnon had not retained some recollection of them or of others in the industry talking about them.

11. I conclude that PODS was not common general knowledge at the relevant time.

12. The opponent similarly relied on the conferences to suggest that the idea of integrating the vehicle detection unit (“VDU”) with a ticket issuing device to automatically populate the infringement issuing software was common general knowledge as a result of Mr Gladwin and Mr Welch disclosing such intention at the conferences.  For similar reasons as above in respect to PODS, I conclude the idea of integration between the VDU and infringement issuing software was not common general knowledge at the relevant time.

    Prior Art Information

13. In terms of prior art information under subsection 7(3), at the hearing the opponent principally relied on the following prior art.

    PODS Disclosures

14. As indicated above, disclosures about PODS arose in several sources, namely in the June 2005 issue of the ANPSG journal, “Making a Space”, and at the 2005 and 2006 ANPSG conferences.  The opponent also indicated that patent publication, WO 2005/111963, was an original patent application in relation to PODS.  That publication is equivalent to Australian patent 2005243110 (“the VMS patent”).  

    “Making a Space” Article – June 2005

15. The article is entitled “PODS – The Next Big Thing?”.  After a short introduction of PODS’ ability to eliminate several issues around manual parking enforcement, the article quotes Mr Gladwin as explaining that the device, in use by his council, is a sensor, buried 10 cm under the road surface, one to each marked parking bay.  The sensor detects the movement of vehicles to and from the bay by detecting the change in the magnetic field.  The change from a “no car state” to a “car state” is measured and a constant “car state” is timed by the device.  The time limits of the bay are programmed into the device and once the limit is exceeded, plus a grace period, the device emits a radio signal which is captured by the patrolling officer who has a receiver and a hand-held computer.  The hand-held device translates the broadcast packet into readable information such as bay number and relevant timing information.  The officer then issues the infringement notice.  The device can also have its firmware upgraded using the hand-held device so that parking time limits and operating times can be easily changed.

    ANPSG 2005 Perth Conference

16. The evidence about PODS from this conference consists of Mr Gladwin’s PowerPoint® slides and his speaking notes, both of which were exhibited with his affidavit.  At [38] and [39] of his affidavit, Mr Gladwin discussed the display of the slides to the audience at the Perth conference.  Subsequently in the affidavit at [40] - [45], Mr Gladwin acknowledged numerous variants between the content of the slides, his speaking notes, and what may have been conveyed to the audience.  For example, Mr Gladwin indicated that he skipped through several slides due to insufficient available presentation time, there were mismatches between the slide numbers and those in the speaking notes due to amendments he made during preparation, including the removal of some slides, and he acknowledged that he did not recall saying some things that were indicated in his speaking notes.  It is also noteworthy that the opponent’s evidence is absent of independent corroboration of what was conveyed at the presentation or of what salient points, if any, delegates had taken away from the presentation.  These points suggest that Mr Gladwin’s evidence is of limited probative value. 

17. In any case, a perusal of the slides establishes there was limited technical content about PODS in the slide set.  One of the slides lists the features of PODS as including an in-ground unit, in-vehicle unit, PDA, unique bay number identifier and that it was firmware upgradeable.  It is noteworthy that there is no description of the operational interrelationships between these elements of PODS.  The concluding slide indicates planned future development of integrating PODS with PDAs.  I would conclude that this material adds no further substantive technical detail over the PODS disclosure in the “Making a Space” article.

    ANPSG 2006 Hobart Conference

18. The evidence about PODS from this conference consists of Mr Welch’s evidence at [46] – [53] of his affidavit.  This evidence principally conveys several detailed passages of words that Mr Welch states he effectively said to the audience during his presentation, both within the venue and during a demonstration of PODS outside in a nearby area where PODS in-ground units had been installed prior to the conference.  In evidence in reply, Mr Welch acknowledged that he did not have any slide set for the presentation.  As with Mr Gladwin’s presentation, the opponent’s evidence is absent of independent corroboration of what Mr Welch conveyed at the presentation or of what salient points, if any, delegates had taken away from Mr Welch’s presentation.  I would suggest that Mr Welch’s evidence is of limited probative value in this respect.

19. In any case, in perusing Mr Welch’s evidence and while acknowledging that he mentioned the prospect of integrating PODS with ticket issuing devices in the future, I would find that the evidence did not add further substantive technical detail over the PODS disclosure in the “Making a Space” article.

    VMS Patent

20. The disclosure in the VMS patent relates to a system for detecting overstay of a vehicle in a parking space.  The detection apparatus may be installed in a parking space.  In one embodiment, the detector comprises a magnetometer which detects changes in the earth’s magnetic field that result from close proximity to the detector of a vehicle having substantial metal content.  The detection apparatus processes and stores data relating to the presence of a vehicle and is in wireless communication with a data collection apparatus when the latter is within range.  The detection apparatus may then transmit overstay data to the data collection apparatus.  The latter may be vehicle-mounted, in a fixed location, or within a hand-held device carried by an enforcement officer.

    Summary of PODS Disclosures

21. The “Making a Space” article and the VMS patent disclose PODS with substantially more technical disclosure than the material from the conferences.     Furthermore, while the essence of the PODS technology is evident in both of the “Making a Space” article and the VMS patent, the latter document is clearly more refined in terms of illustrative embodiments of PODS.  Consequently I will refer to the VMS patent, although it may be noted that there is no reference in the VMS patent to the prospect of future integration of PODS with ticket issuing devices.

    Whether There is Inventive Step over VMS Patent

22. The principal difference between the claimed invention and the VMS patent resides in the claimed invention defining the communication from the VDU as being in a format suitable for pre-population into an infringement issuing device or into infringement issuing software.

23. The opponent submitted that the idea of integrating the VDU with a ticket issuing device to pre-populate infringement details was obvious in order to save time and inconvenience.  The opponent noted that parking officers with Mr Gladwin had complained about the manual entry requirements across the two devices, and that Mr Gladwin and Mr Welch had come to the same view on integration as a solution and disclosed it.  Moreover the opponent suggested there was no inventive step in reducing to practice the idea of automatically populating the infringement details into infringement issuing software.   At [148]-[151] of his affidavit, Mr Spirovski stated that three steps were required before the priority date to implement the concept of automated population of the data fields in the infringement issuing software.  Firstly, the designer of the automated system needed to identify the data format that was defined for each data field in the infringement issuing software that needed to be pre-populated, such as location, street name, mark time, etc.  Secondly, the designer needed to write firmware/source code that could process the infringement data captured by the VDU into data in the format defined for each data field in the infringement issuing software.  Thirdly, the designer needed to decide where the data processing into the format suitable for pre-population into the infringement issuing software should take place.  At [153] of his affidavit, Mr Sprirovski indicated that these three steps required the application of data processing and computer programming skills of the kind taught in Australia for many years before the priority date as part of undergraduate electrical engineering and computer science degrees.  As to the selection of which component performs the data processing into the format suitable for pre-population, the opponent submitted that the options were limited to the VDU, the  ticket issuing device and, if present, a middle tier or back-end computer.  According to the opponent, the VDU was an obvious choice because it made no material difference whether the VDU, ticket issuing device or another system component performed the data processing function.  The opponent further noted that this position was consistent with the specification which teaches that any of the back-end system, the middle tier, the hand-held device or the VDU can process the infringement data into a format suitable for pre-population (page 10 lines 16-19, page 19 lines 28 and 29, page 20 lines 1 and 2).  

24. The opponent’s case broadly hinged on the idea of integration of the VDU with the ticket issuing device being obvious in view of the problems found in the field with parking officers having to manually transpose data, captured by their hand-held device from the VDU, into the ticket issuing device.  In this respect, Mr Spirovski’s evidence may be said to be tainted with hindsight and with the solution in mind.  At [147] and [148] of his affidavit, Mr Spirovski does not begin from the position of the compatibility problems with existing VDUs, or even from the position of integration being a possible solution.  Rather, to apparently support the position that implementation of the integration idea merely required reduction to practice, Mr Spirovski’s evidence (at [148]-[151]) offers opinions of what was required of the designer before the priority date to implement the concept of automatically populating the data fields in the infringement issuing software.  Clearly the claimed solution, at least partially, was in the mind of the declarant. 

25. In any case, the idea of integration is significantly short of the claimed feature of communications from the VDU being in a format suitable for pre-population into infringement issuing software.  While it may be argued that this is mere reduction to practice of the integration idea, the above-mentioned case law appears to support the position that an invention and an inventive step is assessed around the implementation of an idea or putting the idea into practice.  For instance, in Wellcome Foundation, the test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not (my emphasis).  Similarly, in Alphapharm, the High Court accepted an affinity with the approach of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative.  

26. Moreover the treatment of a claim to a combination in Alphapharm is telling in the present case. The High Court stated that the interaction between the integers is the essential requirement for the presence of an inventive step. It is the selection of the integers out of perhaps many possibilities which must be shown to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers. On this point, it should be noted that the pertinent claimed feature is of communications from the VDU, as opposed to from any other device, being in a format suitable for pre-population into infringement issuing software. In this respect, and even if I accepted Mr Spirovski’s evidence at [147]-[151] as untainted, it would appear that Mr Spirovski’s following evidence does not sufficiently help the opponent. Mr Spirovski at [156] describes the claimed design of the VDU processing the infringement data into the required format for pre-population and communication in that format as a design that would have come to mind as one design option. He acknowledges he would not have selected this option. Professor Evans, at [64] and [65] of his evidence in answer, expressed a similar position, principally on account of the effect of processing requirements on the battery life of the VDU if the VDU were responsible for pre-population. He indicated that he would be inclined to do as much of the processing as possible in the handheld device, which can be more easily recharged, and ensure that the VDU does as little processing as possible. Professor Evans stated that it was counterintuitive to undertake too much processing in the VDU.

1. In any case, the Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft decision, [2014] FCAFC 73, appears to be instructive. Firstly the court in that case clearly followed the principles established by the High Court in Alphapharm.  At [71] of the Generic Health decision:-

   “… we think a test formulated in terms of worthwhile to try was firmly rejected by the High Court in Alphapharm …  The fact (if it be the fact) that the position in the United States may have shifted does not affect the binding nature of what the plurality said in Alphapharm.”

2. Secondly the Generic Health case dealt with a similar limited number of options as in the present case.  Specifically, at [66], the court indicated that the Generic Health parties argued that there were two choices.  These were a preformulation study and an enteric coating on the one hand, or a preformulation study and a limited or pilot bioavailability test or study on the other.  The court appeared to be unpersuaded by limitations of choices for the skilled addressee.  At [67], the court quoted from Alphapharm as follows:-

   “… in a case such as the present, the relevant question was that posed in the first part of the passage.  Were the experiments ‘part of’ that inventive step claimed in the Patent or were they ‘of a routine character’ to be tried ‘as a matter of course’?  If the latter be attributable to the hypothetical addressee of the Patent, such a finding would support a holding of obviousness”.

3. In the present case, Professor Evans, at [66] – [68] of his evidence, broadly discussed the engineer’s available choices of data processing responsibility amongst the devices as requiring a balance between internal processing energy consumption of the devices and the amount of information that needs to be communicated.  For example, if processing the data in the VDU meant significantly reducing the amount of information communicated, it may be worth investigating pre-processing by the VDU into a suitable format further.  Professor Evans stipulated that each solution involved different trade-offs related to energy usage.  As mentioned earlier, Mr Spirovski’s evidence indicated that the use of the VDU to provide communication in a format suitable for pre-population into infringement issuing software is one choice of device for performing this function, amongst others.  Notably Mr Spirovski would not have selected this option.  From each of the declarants’ evidence, I find that it is not the case that the claimed arrangement of communications from the VDU being in a format suitable for pre-population into infringement issuing software would have been chosen as a matter of routine, or was of a routine character to be tried as a matter of course over the disclosure in the VMS patent. 

4. I conclude the claimed invention has an inventive step over the VMS patent.

   AU 2006235864 - Meter Eye IP Limited (“Meter Eye Patent”)

5. The Meter Eye patent relates to a vehicle metering system for detecting and metering a vehicle parked in a parking space.  The envisaged environment includes on-street parking, off-road parking or the floors of a vehicle parking building.  A vehicle sensor or VDU may be mounted in or about a parking space to detect when a vehicle parks and when it leaves the parking space.  The sensor feeds status signals to a control means within the VDU when a vehicle is detected.  The control means includes a timer for counting out a pre-set time period representing the allowable time period that a vehicle can be legally parked.  When the time being clocked is greater than the allocated parking time period, the control means sends a coded signal with identification of the parking space to a remote receiver that is configured to indicate to a user that the parking limit has been exceeded by a vehicle parked in the parking space.  The remote receiver may be a programmable hand-held device carried by a parking warden.  The hand-held device may be adapted to generate data feeds to an external printer to print infringement notices as required.  Alternatively, the hand-held device forwards logged data to a main computer which may be envisaged as being based in a check-out booth of a vehicle parking building or in the infringement processing centre of a local authority.  In this case, the main computer processes and issues infringement notices to vehicle owners as appropriate based on information from the VDUs and optionally also from registration plate reading means associated with each parking space.

6. As with the VMS patent, the principal difference between the claimed invention and the Meter Eye patent resides in the claimed invention defining the communication from the VDU as being in a format suitable for pre-population into an infringement issuing device or into infringement issuing software. 

7. The opponent submitted that the Meter Eye patent disclosed the control means being able to compile details of the infringement into a suitable data-file report that can be transmitted to the hand-held device.  The data-file report may include overstay details.  The opponent further referred to claim 16 of the Meter Eye patent to suggest the data-file report can be printed by the hand-held device as the infringement notice.  On the other hand, claim 16 does not define the report being printed by the hand-held device.  Moreover, Mr Spirovski acknowledged some difficulty with the Meter Eye patent’s disclosure of communication of the report by the VDU.  He stated that the disclosure that the data-file report can be printed as an infringement notice strongly suggests the overstay details in that report are communicated by the VDU in the format required by the data fields in the infringement issuing software, although the Meter Eye patent does not enable this to be confirmed.  That is, it is unclear, on the face of the Meter Eye patent, whether there is any re-formatting or other processing of the data-file report that is generated by the VDU before it is printed as an infringement notice. 

8. While the Meter Eye patent contains references to the adaptability of devices to generate data feeds to enable automatic printing of infringement notices (for example at page 12 lines 25-27), such feeds appear to emanate principally from the handheld devices carried by parking wardens.  There is no clear disclosure in the Meter Eye patent that a VDU communicates data in a format suitable for pre-population into infringement issuing software as claimed in the present case.

9. In any case, the opponent submitted that the skilled person would understand that one of the VDU or the hand-held device must be responsible for placing the data-file report into the necessary format, and thus the choice between one of the two devices performing this function could not involve an inventive step.  I would firstly note the omission by the opponent of the capacity of the main computer to issue infringement notices, disclosed in the Meter Eye patent for example at page 12 lines 19-23.  Thus it is conceivable that the main computer processes VDU data into a format suitable for pre-population into infringement issuing software.  As for the VMS patent, the evidence indicates the use of the VDU to provide communication in a format suitable for pre-population into infringement issuing software is one choice of device for performing this function, amongst others, not that the claimed arrangement would have been chosen as a matter of routine.  For the same reasons as discussed above for the VMS patent, I would conclude the claimed invention has an inventive step over the Meter Eye patent.

10. In the Meter Eye patent, it may be noted that the vehicle detection system is preferentially an infra-red detection system (page 3 lines 21-23 and page 9 lines 25-30).  The opponent acknowledged that the Meter Eye patent did not expressly disclose that the detector means is a magnetic sensor as claimed in the present case.  On the other hand, the opponent referred to page 9 line 24, which states that any suitable sensing means may be employed.  The opponent further stated that the evidence from both sides indicated that the skilled reader would understand any suitable sensing means to encompass magnetic sensors (Mr Spirovski’s affidavit at [93]-[97] and Professor Evans’ evidence at [51](v)).  Both declarants in that evidence though further described a number of suitable sensor types.  Mr Spirovski discussed two main classes of suitable sensor.  These were magnetic sensors and infra-red sensors.  He further mentioned that other classes that could be considered are ultrasonic, pressure sensors and optical sensors.  Professor Evans mentioned similar types of sensors and that there would be substantial work required to determine the best sensor for the circumstances (at [51]-[59] of his evidence).  Nonetheless the use of magnetic sensors would appear to have stood out at the relevant time as preferentially suitable for the purposes of vehicle detection.  Mr Spirovski put this position clearly at [97] of his affidavit.  He stated that he regarded magnetic sensors to be suitable for use in the vehicle detection system described in the Meter Eye patent for the following reasons.  For example, magnetic sensors are suitable for detecting the presence of large steel objects such as vehicles.  Magnetic sensors consume substantially less power than other classes of sensing devices and are ideally suited to applications that require battery operation, such as the device in the Meter Eye patent.  Magnetic sensors are relatively cheap compared with other classes of sensing devices.  I would conclude in the present case that magnetic sensors would have been an obvious alternative choice at the relevant time over the infra-red sensors of the Meter Eye patent.

11. On account of the claimed arrangement of the VDU providing communication in a format suitable for pre-population into infringement issuing software though, I conclude the claimed invention has an inventive step over the Meter Eye patent.

    Meter-Eye VDS II Brochure

12. This brochure is from Wilson Technology Solutions, which is described in the brochure as exclusive distributor of Meter-Eye products.  The brochure describes the Meter-Eye VDS II device and that this device “retains all the features which previously stood VDS Meter-Eye ahead of other standard meter-based systems”. 

13. In evidence and at the hearing there was some discussion amongst the parties as to whether the device disclosed in the brochure was the same as that disclosed in the Meter Eye patent.  While there may be some conjecture as to whether the Meter-Eye patent describes the VDS Meter-Eye device, or the Meter-Eye VDS II, or some other Meter-Eye device, the following may be noted.  Both documents broadly describe a VDU for detecting the presence of a vehicle in a parking space.  The detection system operates by infra-red detection means.  The VDU notifies a parking enforcement officer via a hand-held device that a vehicle has exceeded the allowable time.  The hand-held device may generate feeds to an infringement issuing device, such as an external printer, to issue infringement notices.  In the Meter-Eye brochure specifically, the hand-held device runs infringement management software and automatically logs and transfers infringement details to an infringement issuing device, which may also be carried by a parking officer to issue infringement notices on the spot.  Additionally, a particular embodiment of the VDU being recessed 20mm into the road surface and protruding 15mm above ground is disclosed in the Meter Eye patent (page 8 lines 26 and 27) and in the Meter-Eye VDS II brochure.  Furthermore the brochure refers to a patent pending number which is equivalent to the NZ priority document for the Meter Eye patent.  I conclude the Meter-Eye patent and the Meter-Eye brochure broadly describe the same subject matter. 

14. As with the Meter Eye patent though, the Meter-Eye brochure does not clearly disclose the means for enabling compatibility between the VDU and the infringement issuing software or infringement issuing device.  The Meter Eye brochure mentions the automatic logging and transfer of data to an infringement issuing device.  While not definitively described, the function may be associated with the traffic enforcement officer’s handheld device.  Specifically though, there is no clear disclosure in the brochure of the presently claimed arrangement of the VDU providing the communication in a format suitable for pre-population into the infringement issuing software or device.  As I have also found on the evidence that this arrangement would not have been chosen as a matter of routine, I conclude the claimed invention also has an inventive step over the Meter Eye brochure.

    ENTITLEMENT

15. Section 15 of the Patents Act relates to persons to whom a patent may be granted.  Relevant parts of sub-section (1) appear below.

    (1)Subject to this Act, a patent for an invention may only be granted to a person who:

    (a)    is the inventor; or

    (b)   would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

    (c)    derives title to the invention from the inventor or a person mentioned in paragraph (b); or …..

16. In Robert Dommett v Zebra Research Pty Ltd, [2011] APO 53 at [32], the delegate referred to a decision of the Full Court of the Federal Court of Australia, University of Western Australia v Gray, [2009] FCAFC 116 (“the UWA decision”), to discuss the law governing disputes over entitlement.  The delegate stated that the court accepted that entitlement is assessed by considering three matters:-

    1.identify the “inventive concept” of the invention as defined in the claims;

    2.determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and

    3.determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.

17. In the first instance decision, University of Western Australia v Gray (No. 20), [2008] FCA 498, French J commented, at [1426], that the inventive concept marks a boundary between invention and verification. French J then referred to the US Court of Appeals Federal Circuit decision, Burroughs Wellcome Co v Barr Laboratories Inc, [1994] USCAFED 1225, (1994) 40 F.3d 1223. He stated that this decision set out the following principles, amongst others, as established by US appellate courts:

    1.Conception is the touchstone of inventorship, the completion of the mental part of inventions;

    2.Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”.  It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.

18. On appeal, the Full Court of the Federal Court, in the UWA decision, did not appear to disturb French J’s position on the above points.

    Opponent’s Position

19. The opponent’s position on entitlement was that the nominated person is not entitled to the grant of a patent for the invention or, alternatively, is only entitled to the grant in conjunction with some other person.  The position may seem curious in light of the opponent having also challenged the claimed invention for lack of inventive step, particularly in view of Mr Welch’s public disclosure of the idea of integration.  In the Robert Dommett case in respect to a request for a determination under Section 32 or declaration under Section 36, the delegate concluded that it was inappropriate to make any such determination or declaration as the evidence substantiated that the subject matter embodied by the inventive concept was publicly disclosed before the earliest priority date by or with the consent of the requestor.  As a consequence, the requestor had forfeited any right to inventorship.  Similarly, in Mining Equipment (Minquip) Pty Ltd v Mining Supplies Australia Pty Ltd, [1999] APO 55, (1999) 45 IPR 566, in the context of an application for a declaration under Section 36, I concluded that the Section 36 applicant, having publicly disclosed before the priority date the material for which it sought entitlement, had forfeited any right to a patent for that matter. The present opponent addressed this on two fronts. The first was that if I found there was an invention then the opponent would be entitled to the invention, at least jointly. At [9] of his affidavit, Mr Welch stated that he assigned to the opponent all rights and title to all intellectual property associated with the PODS technology. The second was that, while Mr Welch may have publicly disclosed his contribution of the idea of integration, the claimed invention would nonetheless not have come about without Mr Welch’s contribution.

    Inventive Concept

20. The opponent described the core inventive concept in the present case as being, or at least including, an integrated VDU system in which the following occurred.  The presence of a vehicle is detected using a magnetic sensor.  A processor in the VDU determines whether a vehicle has overstayed the time limit based on the sensor signal.  The VDU communicates the infringement details to the ticket issuing device carried by the parking officer.  The infringement details are automatically populated into the infringement issuing software, saving the officer from having to manually key those details into the ticket issuing device.  I would broadly concur with that description of the inventive concept with the addition that the claims also define the VDU as the device providing the data in a format suitable for pre-population into infringement issuing software. 

    Person(s) Responsible for the Inventive Concept

21. The opponent submitted that Mr Welch conceived of its description of the inventive concept by at least the PODS trial during 2005 and that he disclosed that concept to Mr Del Papa of SARB in the course of the attempted collaboration in 2005 to integrate PODS with SARB’s ticket issuing devices.  The opponent asserted that all that remained thereafter was to reduce the inventive concept to practice.  Alternatively, the opponent argued that if there were more than mere reduction to practice or even if Mr Welch’s contribution was not as substantial as SARB’s, the contribution from Mr Welch constituted the core conception or idea underpinning the opposed application.

22. Despite the opponent’s assertions of Mr Welch conceiving of the key element of the automated population of the infringement details into the infringement issuing software, the evidence does not appear to sufficiently bear this out.  In the main the opponent’s evidence discussed the broad idea of integration.  Mr Welch may have conceived of the idea of integration of PODS with ticket issuing devices (Mr Welch’s affidavit at [16] – [26]).  On the other hand, Mr Gladwin and his team of parking officers may possibly be entitled to a similar claim (for example, Mr Gladwin’s affidavit at [21]).  In any case, the idea did not seemingly lead towards how integration of the devices would be achieved in the environment of vehicle parking compliance management systems.  For example, there appeared to be no evidence of any consideration at the relevant time from Mr Welch, or anyone else, of the hardware integration requirements or options amongst system components, or of the data management, data processing or energy issues amongst individual devices in order to integrate.  It may be argued that integration through data re-formatting may only have required ordinary skill to reduce the invention to practice.  It may also be argued that any of the system devices, including the VDU, could have been chosen to perform this function.  On the other hand, it would appear to have required significant steps and considerations (for example Professor Evans’ evidence at [66] – [68]) to move from the device incompatibility problem, of PODS or any other sensor system, through the integration idea to the steps of the VDU processing sensor and notifiable event data into communications in a format suitable for pre-population into infringement issuing software.  In accordance with the principles from the Burroughs case, it may be said that the evidence in the present case is devoid of a formation from Mr Welch of a definite and permanent idea of a complete and operative invention. 

1. The David Leigh Wake v Cavitus Pty Ltd decision, [2010] APO 11, also appears to be instructive in this respect. After a significant discussion of the authorities overseas and in Australia on entitlement, the delegate commented as follows at [67]:-

   “It is clear from the authorities that resolution of the primary issue turns on an assessment of whether Wake made any contribution to the conception of the invention which had a material impact or led to a result or advantage not originally contemplated, in contrast to a better way of physically implementing the invention.  The question may otherwise be stated as would the invention have come about without Wake’s involvement.”

2. Moreover at [81] of the Wake decision:-

   “… it must be determined whether any contribution made by Wake was integral to the development of the subject invention.”

3. The above principles appeared to be supported in Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) (No 3), [2014] FCA 4. Concluding at [108] for example:-

   “… if the final concept of the invention would not have come about without a particular person’s involvement, then that person has an entitlement to the invention.  … Finally … a person may be considered a joint inventor where they had a general idea of what was required, but someone else was required to put the ideas into effect and did so.”

4. I would conclude that Mr Welch’s idea of integration, alone, could not be said to have been a contribution integral to the development of the claimed invention, or an idea of what was required to bring the claimed invention to effect.

5. At [19] of his affidavit, Mr Welch expressed the integration idea with a little more detail.  He stated that he was confident that PODS could be integrated with the applicant’s ticket issuing devices by writing a protocol for exchanging the VDU’s overstay data between the PODS software and the ticket issuing software so that the infringement details were automatically entered into the ticket issuing software.  On the other hand, this similarly does not go to the hardware, or the data management or processing arrangements as to which device or devices in the system would be responsible for providing the data in a format suitable for pre-population into infringement issuing software. 

6. I conclude that Mr Welch could not be regarded as a person responsible for the inventive concept in the present case.

   Collaboration

7. In John Dillon Upham v Commissioner of Patents; Victor and Dan Vrubel (Joined Parties), [1998] AATA 852, at [20], one of the principles having regard to co-inventors was evidence of collaboration. There it was stated that such evidence is useful in assessing objectively whether there has been a relevant contribution. In Re Applications by Commonwealth Scientific and Industrial Research Organisation and Gilbert and Hazlewood and Others, [1995] APO 16, 31 IPR 67, at page 73, the delegate stated:-

   “… in the present case the fact that the parties were in a collaboration is a major consideration – more important than the issue of who invented what in the component parts of the invention.

   The terms of the collaboration were never put in writing.  But this is not a reason to deny its existence – the correspondence between the parties clearly recognises a real and ongoing collaboration.”

8. Further on page 73:-

   “In my view the collaboration between the present parties was based on a sharing of all ‘advantages’ arising from their collaboration. …  I conclude that a consequence of the collaboration is that entitlement to any inventions associated with the collaboration are (sic) shared between the parties of the collaboration; ie if an individual is not considered to be an actual inventor, they derive title by way of the collaboration.”

9. In the present case, it could not be fairly said that collaboration between Mr Welch and Mr Del Papa, or anyone else at SARB, was as extensive as described in the CSIRO case.  In describing his relationship with the applicant, and more particularly the occurrence of describing PODS to Mr Del Papa, Mr Welch merely concluded, at [26] of his affidavit, that he indicated to Mr Del Papa that he wanted to integrate PODS with the ticket issuing device so that data is exchanged automatically and the officer only has to enter vehicle details.  Subsequently the parties sought to progress towards a commercial relationship in respect to the PODS technology but that failed to materialise (Welch affidavit at [28] – [38]).

10. There may be something more in Mr Welch’s expression, at [19] of his affidavit, that he was confident that PODS could be integrated with the applicant’s ticket issuing devices by writing a protocol for exchanging the VDU’s overstay data between the PODS software and the ticket issuing software so that the infringement details were automatically entered into the ticket issuing software.  On the other hand, there is no evidence before me that this information was conveyed to Mr Del Papa.

11. On the basis of the evidence before me, I find that there was no real collaboration between Mr Welch and Mr Del Papa such that Mr Welch could be said to have contributed to the subject matter of the present application.

    Public Disclosure

12. There was significant discussion at the hearing about Mr Welch’s public disclosure of his alleged contribution to the concept of the invention and the effect of this on any claim to entitlement.  For the sake of completeness, I will discuss this below.

13. Mr Welch, and others such as Mr Gladwin, may have come up with the idea of integrating PODS with ticket issuing devices.  The evidence though indicates that Mr Welch had publicly disclosed that idea before the priority date.  The ANPSG 2006 Hobart conference is a case in point.

14. Mr Welch’s public disclosure of the integration idea is similar to circumstances found in the CSIRO case.  In that case, the inventions related to recombinant xylanases derived from anaerobic fungi.  Dr Gilbert and Professor Hazlewood were funded to conduct research on plant cell wall hydrolases, including xylanases.  In obtaining xylanase clones from CSIRO, Dr Gilbert and Professor Hazlewood identified one of them as a full-length gene for a xylanase.  They called the full-length gene pNX1, and identified nine fragments which they labelled pNX2 to pNX10.  In that case, as a condition for publication of a paper, the authors were required to submit a machine-readable form of the sequence of pNX1 to a sequence database.  The pNX1 sequence was thus publicly available.

15. In responding to counsel’s submission, for Dr Gilbert and Professor Hazlewood, that reference to the prior art base led to any invention only residing with Gilbert and Hazlewood and that consequently they were the only persons entitled to that subject matter, and in similarly distinguishing entitlement from inventiveness, the delegate stated the following at page 74:-

    “I do not agree with Dr Emmerson’s argument.  His analysis focuses entirely on the issue of inventiveness, and ignores entitlement that arises otherwise.  The rights of the present parties are governed primarily by the existence of the collaboration, rather than an analysis of who invented what.  Consequently, although the publication of the sequence of pNX1 may affect issues of novelty, it does not affect the issue of entitlement arising from the collaboration.”

16. In the Robert Dommett case, the delegate did not make a determination in the requestor’s favour as the evidence substantiated that the subject matter embodied by the inventive concept was publicly disclosed before the earliest priority date by or with the consent of the requestor.  In reconciling this with the position in the CSIRO case, it may be noted that in the latter case, the inventive concept embodied more than what had been publicly disclosed.  The same applies in the present case.  The presently claimed inventive concept around vehicle sensing, and processing overstay data, and leading to the VDU providing the data in a format suitable for pre-population into infringement issuing software, embodies significantly more than the mere idea of integration. 

    Conclusion on Entitlement

17. In the present case, I would find that the opponent, through Mr Welch, would not necessarily have been excluded from entitlement only on account of Mr Welch having publicly disclosed, or consented to the public disclosure of, a portion of the inventive concept.  The opponent’s entitlement ground fails on the basis of Mr Welch’s contribution not having been integral to the development of the claimed invention and that there was no real collaboration between Mr Welch and Mr Del Papa such that Mr Welch could be said to have contributed to the subject matter of the present application.

18. I conclude that the opponent has not established that the nominated person is not entitled to the grant of a patent for the invention or, alternatively, is only entitled to the grant in conjunction with some other person.

    SECTION 40

    Disclosure of Invention

19. In the alternative to the ground of lack of inventive step, the opponent submitted that the specification did not comply with subsection 40(2)(a).  That is, if inventive ingenuity was required to reduce to practice the idea of integrating a VDU with a ticket issuing device, then the specification does not disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

20. The principal reasons put forward by the opponent were that there is no disclosure that the VDU should be selected, in preference to other system components, to perform the task of placing the infringement data into a format suitable for pre-population into infringement issuing software, nor is there disclosure of the software or firmware necessary to program the VDU to perform that function.

21. Subsection 40(2)(a) requires the disclosure to be clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.  Provided the specification contains an enabling disclosure of the claimed arrangement, the specification will not be insufficient merely because it does not express a preference for a particular embodiment.  Furthermore, there appears to be no evidence before me suggesting that the relevant person skilled in the art would have had some difficulty with the specification on this matter or on the software necessary to program the VDU.  I find that subsection 40(2)(a) is not contravened in the present case.

    Omnibus claims

22. Subsection 40(3A) of the Act states that the claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention. Claims 25-28 are of this nature. On the other hand, Section 59 lists non-compliance with subsections 40(2) or (3) as a ground of opposition, but not subsection 40(3A). After some discussion at the hearing, the applicant indicated that it was prepared to abandon claims 25-28. An opportunity to allow the applicant to amend the specification to this effect, under Section 104, would thus be appropriate.

    CONCLUSION

100. I have concluded that the claimed invention has an inventive step over the prior art cited in this opposition.

101. I have also concluded that the opponent has not established that the nominated person is not entitled to the grant of a patent for the invention or, alternatively, is only entitled to the grant in conjunction with some other person.

102. In respect to Section 40, I have found that the specification complies with subsection 40(2)(a). On the other hand, claims 25-28 contravene subsection 40(3A). While this is not an available ground of opposition under Section 59, the grant of a patent in this case will be delayed to allow the applicant an opportunity to amend the specification.

103. I allow the applicant two (2) months from the date of this decision to propose suitable amendments in respect to claims 25-28.

COSTS

104. Both parties principally sought their costs.  I see insufficient reason in this case to depart from the principle that costs should follow the event.  On all available grounds raised by the opponent, the opposition is unsuccessful.  I award costs in accordance with Schedule 8 against the opponent, Vehicle Monitoring Systems Pty Ltd.

M. G. Kraefft
Delegate of the Commissioner of Patents