In Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2020] FCA 408, a recent decision of the Federal Court of Australia, Burley J dismissed an appeal in favour of the patent applicant and respondent SARB Management Group Pty Ltd ('SARB'), finding that the appellant, Vehicle Monitoring Systems Pty Ltd ('VMS') had failed to establish the grounds of lack of inventive step and lack of entitlement.
This decision demonstrates how inventive step should be approached in light of amendments to the Patents Act by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)('the Raising the Bar Amendments').
Parking violations - not as simple as issuing a ticket
The patent application in dispute relates to a vehicle detection unit ('VDU') which automatically determines when a vehicle has not complied with parking regulations. The VDU predominately consists of three operational elements, as set out in claim 1:1
- A vehicle detection unit (VDU) comprising:
(1) 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;
(2) a storage device carrying parameters which define notifiable vehicle space occupancy events;
(3) 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.
Novelty & Inventive step requirements
In Australia, an invention is taken to be novel unless it is disclosed in prior art information made publicly available in a single document or through doing a single act.2 Further, an invention is to be taken to involve an inventive step 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, whether that knowledge is considered separately or together with one or more pieces of prior art information.3 Under the Patents Act in force before the Raising the Bar Amendments, prior art information must be first 'ascertained, understood and regarded as relevant' by a skilled person in the art. Although this requirement is no longer required, Burley J opined that:4
First, information that was clearly relevant could be excluded on the basis that the skilled person would not have 'ascertained' the information. It explains that this exclusion of relevant information, which nowadays is readily available through the internet, undermines the principle that patents should not be granted for routine modifications of what was already publicly available. Secondly, that the requirements that prior art information be 'understood' and 'regarded as relevant' are implicit in the prior tests for inventive step, and those being included as threshold limitations on the prior art base complicated the provision unnecessarily, without having any substantial effect on the outcome of the inventive step enquiry. Thirdly, the then current restrictions were 'out of alignment' with the patent systems of Australia's major trading partners.
Thus, information that has been made publicly available is generally enough to be relevant for inventive step. However, where the enquiry relies on two or more pieces of prior art, Burley J states that it 'is to be considered in the context of the task that the skilled person or team is to 'consider' . which is in moving from the common general knowledge to solving a particular problem, or meeting a long-felt want or need'.5
What is common general knowledge?
Burley J defined the state of the art by considering the drawbacks of existing systems,6 and behaviour of parking officers.7 Despite the popularity of a VMS system, the Parking Overstay Detection System ('POD'),8 this was not an indication that the detailed aspects of how POD operates were generally known.9 Moreover, referring to the common general knowledge amongst electrical engineers,10 once suitable components had been selected, determining the operational parameters were all matters of common general knowledge.11
In this regard, Burley J sets out a clear distinction between selecting the individual components of the invention, and how to put it into practice.
The four uncertainties
VMS's inventive step argument predominately relied on the disclosure of its own PCT application (WO2005/111963), which Burley J addressed with the following four points of uncertainty:
- First Point:12 Although two embodiments were disclosed, neither one was indicated as the primary or preferred embodiment. Thus, a skilled addressee intending to implement the system must decide which embodiment to follow.
- Second Point:13 Having regard to how parking officers conduct their business, and the practical difficulties involved with manual data entry, Burley J concluded that it would be a logical inference that data sent from the detection apparatus should somehow be entered into infringement issuing software.
- Third Point:14 From the evidence, it was clear that there were several viable options of how collected data could be used to issue a ticket.
- Fourth Point:15 Although implementation would be relatively straightforward once an option was selected, this does not detract from the question of whether making the selection would be obvious.
Importance of the system architecture - must be considered as a whole
To consider inventive step, Burley J stated:16
. that the question is whether the combination, not each integer, is obvious. It is impermissible to take any one integer or take each integer seriatim and ask whether each integer involved an inventive step. The invention is the combination.
Burley J also noted that:17
In each case the team must evaluate and then decide what direction to go in. 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.
When is it appropriate to combine documents?
To establish obviousness, VMS also relied disclosure of the PCT application in combination with:
(a) an article describing the POD system;18
(b) a PowerPoint presentation delivered at a conference;19 and
(c) a presentation on POD made 8 years ago, which was a rendition based on an unaided recollection of events.20
Burley J considered that a combination with (a) would be appropriate as 'a hypothetical electrical or electronics engineer in the notional team would have an interest in learning of this implementation, if only for confirmation that such a system has been made to work.'21 However (b) was rejected as it was unlikely that a skilled person having reviewed the PowerPoint presentation slides, would 'have found the information in them to be of any practical use in the implementation of the PCT application.'22 Although Burley J also considered that (c) would be appropriately combined, it was not considered 'to be reliable as an accurate rendition of what was presented at the conference.'23
However, the combination still failed to address the issues identified in the PCT application.
Interplay between mere suggestion and clear direction
In order to determine whether an invention is anticipated by the prior art, a suggestion that an embodiment may lead to the claimed invention is insufficient. Rather, there must be clear direction within the prior art such that a skilled addressee, when faced with several possible options, will be directly influenced to select a particular choice.
While it is possible to combine several prior art documents, there must be some reasoning for the skilled addressee to do so.
Footnotes
1. Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2020] FCA 408 at [26]-[29] ('VMS')
2. Patents Act 1990 s 7(1).
3. Ibid s 7(2).
4. VMS (n 1) [88].
5. Ibid [95].
6. Ibid [102]-[105].
7. Ibid [102]-[112].
8. Ibid [113]-[136].
9. Ibid [136]-[137].
10. Ibid [138].
11. Ibid [146].
12. Ibid [198].
13. Ibid [199]-[206].
14. Ibid [207].
15. Ibid [208].
16. Ibid [211].
17. Ibid [212].
18. Ibid [121]-[122].
19. Ibid [123].
20. Ibid [220]. See also VID 318 of 2012.
21. Ibid [217].
22. Ibid [219].
23. Ibid [224].
Originally published 8 May 2020
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