Intellectual Property - Patent Law Update - the Full Court gives SARB’s latest parking product the green light, but says that VMS’ patents remain valid.

As aptly put in the reasons delivered by Burley, Jackson and Downes JJ, this appeal was the next stage in a “lengthy arm wrestle between the parties concerning the rights to the intellectual property in systems for vehicle overstay detection in car parks”. For a summary of the first instance decision by Justice Besanko, see our earlier note here. Despite the large number of issues at first instance, the appeal was confined to two issues. First, did the primary judge err in finding that, on proper construction of the claims, SARB’s latest product (Pinforce Version 3 (PV3)) infringes the claims in suit, one of which was an omnibus claim. Secondly, did the primary judge err in finding that the patents did not fail to disclose the best method. While vehicle overstay technology is, no doubt, in and of itself riveting subject matter, to these authors, the Full Court’s reasons with respect to the construction of the scope of the omnibus claims and the proper analysis to be applied to the best method requirement, are of particular interest.

Technical background

The following technical matters are relevant to understanding the Full Court’s reasons:

• The invention involves a detection apparatus (DA) which sits underground where the vehicle is parked, detects the presence of a vehicle, stores data and wirelessly transmits that data to a data collection apparatus (DCA).
• The DCA indicates to an operator if the vehicle has overstayed.
• It is possible for the determination of whether a vehicle has overstayed to occur in either the DA or the DCA.
• In PV3, the determination of vehicle overstay occurs in the DCA.
• The invention includes a “wake-up scheme” in which a “wake-up signal” is transmitted from the DCA to the DA in order to wake up the DA so that the two apparatuses can engage in a communications session.

Infringement

While there were two patents in issue, it was agreed that the Full Court’s finding in relation to the first patent applied equally to the second patent. With that in mind, there were two claims in issue, claim 21 and claim 32 (the omnibus claim).

Claim 21

Claim 21 is to a system for identifying vehicle overstay in which (among other things not relevant to the issue in dispute) the DCA receives data from the DA and said data “relates to identified instances of vehicle overstay”.

The primary judge had held that this claim was broad enough to include circumstances where the determination of vehicle overstay occurs in the DCA, as is the case in PV3. Justice Besanko arrived at that conclusion by looking at the language of the specification which he considered left open the possibility that data relating to “identified instances of vehicle overstay” could include something less than a determination of vehicle overstay (eg vehicle presence data or a record of vehicle movement in the parking space). In those circumstances, the ultimate determination could occur in the DCA.

The Full Court rejected this approach and observed that it did not “pay due regard to the language of claim 21”. The Full Court’s reasoning rested primarily on its view that the use of the past tense “identified” in claim 21 made clear that the determination of vehicle overstay had to have occurred prior to the data being transmitted to the DCA. That is, the claim required that determination of vehicle overstay occurred in the DA, prior to data being transmitted to the DCA, and so PV3 did not infringe.

One interesting aspect of the Full Court’s reasoning on this issue was its rejection of VMS’ construction argument which relied on the language of the earlier claims. VMS had sought to rely on the language of claims 1 and 11 to support its construction. VMS argued that those claims made clear that the DA determined vehicle overstay, and the absence of such express language in claim 21 meant that claim 21 must encompass a system where determination can occur in the DCA. The Full Court rejected this approach and made the following useful observations which should assist a party attempting to resist a particular construction based on the language of the surrounding claims:

The role of the data collection apparatus is to be determined having regard to the interaction between particular integers of claim 21, not by making assumptions on the basis of the differently worded earlier claims. Accordingly, whilst it is correct that where the same word or phrase is used in a claim(s) consistency should be maintained, that is subject to the practical qualification noted by the Full Court in Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179; (2015) 240 FCR 85 at [85] (Kenny, Nicholas and Beach JJ) that if there is a good reason to depart from such consistency, then it is appropriate to do so. In the present case, the differences in structure and language between claims 1 and 11 on the one hand, and claim 21 on the other, serve to distinguish the points from that case.

Claim 32

Claim 32 is to a system for identifying vehicle overstay “substantially as herein described with reference to an embodiment shown in the accompanying drawings”.

It is not often that we see Courts opining on the scope of omnibus claims, so the Full Court’s reasons here provide some helpful guidance for practitioners.

The specification in suit discloses three embodiments (or aspects). The first is to a method, the second is to an apparatus and the third is to a system. It did not appear to be in dispute that claim 21 and claim 32 both reflected the third embodiment.

SARB argued that, consistent with the primary judge’s reasoning, as claim 21 and claim 32 were to the same embodiments, if it was successful on claim 21 then the same result should follow for claim 32.

VMS’ arguments on its Notice of Contention focused on the figures. VMS submitted that claim 32 ought not be construed as being limited to a system in which overstay is determined by the DA in circumstances where none of the figures showed overstay necessarily being determined by the DA. VMS’ position was that the figures left open the overstay being determined by either the DA or the DCA.

The Full Court rejected VMS’ submissions. The Full Court said that the figures were of no assistance as they were either equivocal as to where the vehicle overstay is determined, or do not identify any apparatus. Therefore, it was necessary to look to the consistory clause representing the third embodiment as the basis for determining the broadest scope of claim 32. That consistory clause was in equivalent language to claim 21 and so claim 32 had to be interpreted consistently with claim 21. The Full Court considered that VMS’ attempt to expand the scope of claim 32 by reference to the figures “ignored the importance of considering the invention as a whole and as described in the specification, including the breadth of the summary of the invention”. Put simply, the Full Court observed that the stream cannot rise above its source.

Best method

The Full Court’s analysis of the best method ground illustrates the importance of accurately defining the invention as described in the specification prior to asserting a failure to disclosure the best method.

The case advanced by SARB at first instance was that the specification did not include the best method known to VMS of communicating data from the DA using a functioning wake-up scheme because it did not describe what VMS knew to be the best transceiver due to its power saving advantage – ASTRX2.

Importantly, the Full Court said that the wake-up scheme as disclosed in the invention: (1) does not claim a transceiver with certain features, such as power saving capabilities; and (2) a particular type of transceiver is not the invention which is described in the embodiments and around which the claims are drawn. Thus, said the Full Court, the invention was to the wake-up scheme and not a transceiver with particular features. Viewed with that lens, there were two critical findings made by the primary judge which the Full Court said SARB had failed to overcome. First, it was not put to the relevant expert that the parameters in the patents did not reflect the best method of a wake-up scheme and second, the wake-up scheme described in the patents was an efficient and adequate wake-up scheme and there was no reason to think on the evidence that the relevant expert knew of a more sophisticated wake-up scheme.

Having failed to overcome those findings, the Full Court held that the patents did disclose the best method of performing the invention.