Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd  FCA 408
This decision forms part of an ongoing battle between two Australian companies over patented technology for improving the efficiency by which authorities monitor and manage access to public parking. In this decision, the Federal Court of Australia provides some helpful guidance on the approach to assessing whether or not a claimed invention involves an inventive step (i.e. is not obvious) under the current provisions of Australian patent law.
Vehicle Monitoring Systems Pty Ltd (VMS) developed a Parking Overstay Detection System (the POD system), which uses in-ground sensors to detect changes in the earth’s magnetic field when a vehicle enters a parking space (or bay). A message is sent wirelessly to a device carried by a parking officer who can then issue an infringement notice, as required.
VMS sought to collaborate with SARB Management Group Pty Ltd (SARB) to advance the POD system technology. SARB is the designer and distributor of software popularly used with generic handheld PDAs for issuing parking infringement notices by council officers. However, no collaboration eventuated from these discussions. Instead, SARB developed its own vehicle detection system which was also based on the use of a sensor to detect changes in the earth’s magnetic field when a vehicle enters a parking space.
More specifically, SARB’s system incorporated a vehicle detection unit (VDU) using a magnetic sensor capable of detecting occupancy of a vehicle space by a vehicle; a storage device carrying parameters which define notifiable vehicle space occupancy events; and a processor operable to initiate a communication from the VDU to a supervisory device (such as a PDA) upon occurrence of a notifiable event (such as a parking violation), wherein the communication includes data items pertaining to the notifiable event and is communicated in a format suitable for pre-population into infringement issuing software.
SARB’s system became the subject of Australian Patent Application No. 2013213708, entitled ‘Vehicle Detection’ (SARB application). Relevantly, VMS opposed the SARB application on the grounds that the claimed invention lacked an inventive step and that SARB was not entitled to the grant of a patent for this invention under the Patents Act 1990.
An opposition hearing was conducted before the Australian Patent Office (Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd  APO 63). The Patent Office rejected each of these grounds as advanced by VMS, determining that claims 1-24 should proceed to grant (but claims 25-28 should not be granted).
VMS appealed this decision to the Federal Court of Australia and the present decision concerns the outcome of this appeal.
VMS submitted that claims 1-24 of the SARB application lacked an inventive step in light of the common general knowledge and five sources of prior art information, including: a published PCT application (filed by VMS); a published Australian patent, a published journal article; slides of a presentation given at an industry conference in 2005; and details of an oral presentation given at an industry conference in 2006.
Additionally, VMS submitted that SARB is not entitled to be the person to whom the patent is granted because Mr Welch of VMS, or alternatively Mr Welch and Mr Gladwin of Maribyrnong City Council conceived of all or part of the invention disclosed in the SARB application and communicated it to Mr Del Papa of SARB, and in doing so sufficiently contributed to the invention to be named as inventors.
The decision involved a comprehensive assessment of facts, technical details, claim construction, and a determination of the common general knowledge involving expert witnesses and submissions from both parties.
For ease of reference, claim 1 is reproduced below:
- 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 (a) operable to process the sensor signal to determine occupancy status of the vehicle space, and (b) operable to compare the occupancy status of the vehicle space with the parameters in order to determine whether a notifiable event has occurred, and (c) operable to initiate a communication from the vehicle detection unit to a supervisory device upon occurrence of a notifiable event, wherein the communication includes (i) data items pertaining to the notifiable event and (ii) communicated in a format suitable for pre-population into infringement issuing software.
There were contentions over the construction of the scope of claim 1, particularly as to whether the VDU initiates a communication only upon the occurrence of a notifiable event or whether the claim includes that the VDU is operable (i.e. able) to initiate a communication at a time other than when a notifiable event has occurred. The Court preferred the latter construction advanced by VMS as to do otherwise would inappropriately add a limitation to the claim that is not present – that is, inserting the word ‘only’ before ‘operable’. Additionally, the Court considered that data items pertaining to the notifiable event did not include ‘all’ data items as the plain language of the claim simply refers to ‘data items’ not ‘all data items’.
Furthermore, there was consideration of the feature ‘communicated in a format suitable for pre-population into infringement issuing software.’ VMS submitted that this required the data communicated from the VDU to the supervisory device to be able to be pre-populated into the data fields in the infringement issuing software without further data processing by the supervisory device. SARB largely accepted this construction but submitted that the language of claim 1 does not preclude additional necessary processing at the supervisory device; for example to receive and organise the data packets. The Court agreed with VMS’s construction and SARB’s qualification.
In Australia, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of the relevant claim. The assessment can be made against the common general knowledge separately or together with certain other pieces of prior art information.
Accordingly, when assessing whether or not a claimed invention involves an inventive step it is first necessary to establish the relevant common general knowledge of the trade.
The prior information that can be used to supplement the common general knowledge to support an assertion of lack of inventive step is provided by section 7(3) of the Patents Act 1990 as follows:
(a) any single piece of prior art information; or
(b) a combination of any two or more pieces of prior art information that the skilled person could, before the priority date, be reasonably expected to have combined.
Section 7(3)(a) enables any publicly available single item of prior art information to be added to the common general knowledge for the purpose of considering whether or not an invention involves an inventive step. Section 7(3)(b) facilitates the addition of a combination of two or more (publicly available) pieces of prior art information to supplement the common general knowledge for the consideration of invention step, subject to the condition that the skilled person could be reasonably expected to have combined them.
The requirement that the prior information merely be publicly available for it to be available for the consideration of inventive step represents a significant departure from the more rigorous requirements that existed before the changes to Australian patent law introduced by the Raising the Bar Act. Previously, no prior art information could be added to the common general knowledge unless the skilled person could, before the priority date, be reasonably expected to have ascertained, understood, and regarded it as relevant.
Despite this framework, there was some dispute between the parties as to the proper approach to be taken when seeking to combine two or more pieces of prior art information under s 7(3)(b). The Court reviewed the submissions from each party and summarised the relevant law before stating:
‘It follows that I do not accept that it is necessary for VMS to demonstrate any more for the purpose of s 7(3)(a) than that the prior art information has been made publicly available. Once it has done so, such information is notionally supplied to the person skilled in the art within s 7(2). For combining two or more pieces of prior art information, s 7(3)(b) deems that if those pieces of information are ‘publicly available’, they are be made available to the person skilled in the art. It will be a question of fact whether or not they may be reasonably be expected to be combined.’
In the respective approaches to inventive step, there was general agreement on the common general knowledge of electrical engineers with respect to wireless sensor networks. However, there was some disagreement over whether or not the POD system formed part of the common general knowledge and, if so, what information concerning that system was known at the time.
The Court considered that the broad working of the POD system formed part of the common general knowledge in the art but did not accept that the common general knowledge would include a detailed understanding of the mechanisms of the POD system, or experience of using the POD system. In particular the means of communication between the in-ground sensor and the various remote terminals was not considered common general knowledge nor was the manual entry problem of transcription errors when using the POD system.
VMS first relied on the combination of the PCT application with information contained in an article on the POD system entitled ‘PODS – the Next Big Thing’. However, the article did not consider pre-population of data items into infringement issuing software, which was a crucial item of detail absent from the disclosure of the PCT application.
VMS also cited a PowerPoint presentation, by Mr Gladwin, only as a publication of the slides. The meaning of the slides, shorn of detail provided during the presentation, was opaque and the information in them was not considered to be of any practical use in the implementation of the PCT application.
Additionally, VMS cited a presentation given by Mr Welch at a conference in November 2006. However, VMS faced insurmountable hurdles in proving the content of the presentation was made publicly available. The Court noted the intrinsic danger in relying on an unaided recollection of events. Whilst it was agreed Mr Welch was doing his best to assist the Court, it was noted that memories fade and, as such, it was unlikely that he would recall what he said with any reliable accuracy.
In considering inventive step, the Court was conscious that the question is whether the combination, not each integer, is obvious. On this basis, the Court identified four points of uncertainty for the skilled team seeking to implement a system or method as disclosed in the PCT application. Referring to the four identified points of uncertainty, the Court considered that each point required decisions on how to proceed which would involve prototype testing and evaluation. The Court noted the following:
“In my view, whilst the number of alternative solutions is relatively limited, there is no single line of logic that leads to the invention as claimed such that it can be concluded that the combination arrived at was ‘very plain’, or obvious. In my view the qualitative evaluation weighs sufficiently in favour of SARB to arrive at this conclusion.”
Accordingly, the Court held that VMS had not discharged its onus of demonstrating, on the balance of probabilities, that the invention claimed in claim 1 lacks an inventive step in view of the prior art PCT Application. The remaining prior art information relied on by VMS was also not successful in demonstrating that the claimed invention lacked an inventive step, as they did not touch upon the most material aspects of the claimed combination.
Regarding VMS’s claim that SARB lacked entitlement to the invention, there was some dispute over the content of the conversations between Mr Del Papa, Mr Gladwin and Mr Welch when proposing the collaboration between VMS and SARB.
The Court found that the message conveyed to Mr Del Papa was, at its highest, the idea that the POD system could possibly be adapted in the way suggested by Mr Welch and Mr Gladwin. In the Court’s view the invention disclosed in the specification and the subject of the claims was not that obvious, high level idea, but rather a more prosaic, practical implementation. It was the reduction of that concept to a working apparatus that is the invention. The Court considered that neither Mr Welch nor Mr Gladwin played any role in arriving at the solution and rejected that Mr Welch or Mr Gladwin should be named either as the sole inventor or as a co-inventor.
The Court found that the grounds of opposition to the grant of a patent on the SARB application, as advanced by VMS, had not been made out. Accordingly, the appeal was dismissed and it was ordered that claims 1-24 of the SARB application proceed to grant.
This decision provides some helpful clarification that publicly available prior art information can be readily added to the common general knowledge when assessing whether or not a claimed invention possesses an inventive step, following changes made to Australian patent law under the Raising the Bar Act. This decision also highlights the practical difficulties that can arise when relying on non-documentary publications such as presentations and lectures, particularly the difficulty in determining precisely what information was made publicly available by such events over time.
For further information, please contact Greg Whitehead.