FEDERAL COURT OF AUSTRALIA
Upaid Systems Ltd v Telstra Corporation Limited (No 3) [2016] FCA 227
ORDERS
Applicant | ||
AND: | TELSTRA CORPORATION LIMITED (ACN 051 775 556) Respondent | |
AND BETWEEN | TELSTRA CORPORATION LIMITED Cross-Claimant | |
AND: | UPAID SYSTEMS LTD Cross-Respondent | |
DATE OF ORDER: |
THE COURT ORDERS THAT:
1. Pursuant to r 16.21 of the Federal Court Rules 2011 (the Rules), paragraph 1 (and all related subparagraphs) and paragraph 19 (and all related subparagraphs) of the consolidated particulars of infringement filed by the applicant on 5 November 2014 be struck out.
2. Pursuant to s 31A of the Federal Court of Australia Act 1976 (Cth) (the Act) and r 26.01 of the Rules, judgment be given for the respondent in respect of the applicant’s claim for infringement of claim 1 of Patent No 2008203853.
3. Costs be reserved.
4. The proceeding be stood over for directions at 9.30 am on 26 April 2016.
5. The respondent file and serve any consolidated submissions on the question of costs by 4.00 pm on 24 March 2016.
6. The applicant file and serve any submissions in answer on the question of costs by 4.00 pm on 14 April 2016.
7. The respondent file and serve its submissions in reply, if any, on the question of costs by 4.00 pm on 21 April 2016.
8. Order 1 made on 6 November 2015 be extended until the determination of the respondent’s amended interlocutory application dated 26 October 2015.
9. Pursuant to s 37AF(1) of the Act, until the determination of the respondent’s amended interlocutory application dated 26 October 2015, the sub-headings below the headings “Pay with my Telstra mobile—pre-paid” and “Pay with my Telstra mobile—post-paid”; paras [47]-[48]; the last three sentences of para [50]; the last three sentences of para [52]; the third, fourth and fifth sentences and the last four words of para [56], and its immediate heading; paras [57]-[64] and their immediate headings; the second sentence of para [65]; the third to sixth sentences of para [70]; the first sentence of para [71]; the fifth, sixth and ninth to twelfth sentences and the last three words of the eighth sentence of para [74]; the fourth and seventh to tenth sentences and the last three words of the sixth sentence of para [75]; the last two sentences of para [79]; the last sentence of para [236] and para [238] of the reasons dated 11 March 2016, not be published and not be disclosed to any person other than in accordance with Order 1 made on 6 November 2015, as extended. This order is necessary to prevent prejudice to the proper administration of justice.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
YATES J: |
1 The respondent, Telstra Corporation Limited (Telstra), moves pursuant to r 16.21 of the Federal Court Rules 2011 (the Rules) for orders that the further amended statement of claim and consolidated particulars of infringement filed by the applicant, Upaid Systems Ltd (Upaid), be struck out. Telstra also moves pursuant to s 31A of the Federal Court of Australia Act 1976 (Cth) (the Act) and, or alternatively, r 26.01 of the Rules for orders that judgment be given in its favour.
2 The proceeding was commenced on 21 August 2013 by Upaid filing an originating application, statement of claim and particulars of infringement. The particulars of infringement alleged that Telstra had infringed 53 claims of Patent No 2008203853 entitled “Convergent communications platform and method for mobile and electronic commerce in a heterogeneous network environment” (the 853 patent) and 53 claims of Patent No 770646 entitled “Communication services” (the 646 patent). On 11 October 2013, Telstra filed a defence, notice of cross-claim, statement of cross-claim and particulars of invalidity in respect of each patent.
3 On 16 October 2013, Telstra filed an interlocutory application seeking to strike out Upaid’s claim or, alternatively, seeking an order that Upaid provide further and better particulars.
4 On 8 November 2013, Upaid filed an amended statement of claim and amended particulars of infringement as well as a defence to Telstra’s statement of cross-claim.
5 On 23 December 2013, after a hearing conducted on 3 December 2013, I struck out Upaid’s amended particulars of infringement and ordered that it file (further) amended particulars of infringement by 28 February 2014: Upaid Systems Ltd v Telstra Corporation Ltd (2013) 220 FCR 182; [2013] FCA 1441 (Upaid No 1). In my reasons for judgment, I outlined a number of other background matters which I will not repeat here.
6 On 24 February 2014, by consent, the time for filing the amended particulars of infringement was extended to 14 March 2014. Subsequently, by consent, the time for filing the amended particulars of infringement was further extended to 17 March 2014.
7 On 17 March 2014, Upaid filed and served its amended particulars of infringement. These particulars alleged that Telstra had infringed 16 claims of the 853 patent and 11 claims of the 646 patent.
8 On 8 May 2014, Telstra served a request for further and better particulars in respect of the infringements as then particularised by the amended particulars of infringement.
9 On 12 May 2014, I ordered, by consent, that Telstra provide, by 28 May 2014, any further request for further and better particulars and that, by 2 July 2014, Upaid provide a response. On 29 May 2014, by consent, I extended the time within which Telstra was to make its request to 4 June 2014 and the time within which Upaid was to make its response to 9 July 2014.
10 On 5 June 2014, Telstra served separate requests for further and better particulars in respect of the alleged infringements of the 853 patent (the 853 request) and the alleged infringements of the 646 patent (the 646 request). The 853 request was 111 pages in length, containing 839 requests. The 646 request was 43 pages in length, containing 668 requests.
11 On 19 June 2014, Upaid served “replacement paragraphs” in respect of the amended particulars of infringement that had been filed on 17 March 2014. The “replacement paragraphs” related to the alleged infringements of the 853 patent.
12 On 26 June 2014, by consent, the time within which Upaid was to respond to the 853 request and the 646 request was extended to 23 July 2014.
13 On 4 July 2014, Telstra served a request for further and better particulars in respect of the “replacement paragraphs” which Upaid had served on 19 June 2014 (the supplementary request).
14 On 23 July 2014, Upaid served its response to the 646 request. On 25 July 2014, Upaid served its response to the 853 request. On 1 August 2014, Upaid served its response to the supplementary request. On 15 August 2014, Upaid served amended responses to these requests, correcting certain typographical errors.
15 On 28 August 2014, I ordered that, by 26 September 2014, Upaid provide Telstra with a draft consolidation of the particulars it had provided. I also ordered that, if Telstra did not consent to the consolidated particulars being filed, then Upaid was to file an interlocutory application seeking the requisite leave. I appointed 3 November 2014 for the hearing of any such interlocutory application. Other orders were made.
16 On 29 August 2014, Telstra provided Upaid with a document entitled “Outstanding deficiencies in Upaid’s particulars of infringement”. On 2 October 2014, Upaid provided a response to this document, entitled “Upaid’s Response to the Alleged Deficiencies Document”.
17 On 9 October 2014, Upaid filed an interlocutory application for leave to file the consolidated particulars.
18 On 29 October 2014, Telstra filed the present interlocutory application. The hearing originally appointed for 3 November 2014 in respect of Upaid’s interlocutory application for leave to file the consolidated particulars did not proceed. On that day, I granted leave to file the consolidated particulars and the matter was listed for directions on 13 November 2014. This step was taken in light of the filing of the present interlocutory application on 29 October 2014, and to facilitate the hearing of the application. On 5 November 2014, the consolidated particulars were filed. In subsequent paragraphs of these reasons, I refer to the consolidated particulars as, simply, the particulars.
19 On and after 18 November 2014, orders were made to bring the present interlocutory application to readiness for hearing. In that connection, Upaid sought discovery from Telstra. It also sought leave to interrogate. This was opposed (at least in part) and led to a contested hearing on 8 December 2014. Judgment was given in respect of that dispute on 16 December 2014: Upaid Systems Ltd v Telstra Corporation Ltd (No 2) [2014] FCA 1377 (Upaid No 2).
20 The present interlocutory application came before me for hearing on 11 and 12 March 2015. As originally appointed, the hearing was directed to the case that Upaid has particularised with respect to the alleged infringements of claim 1 of the 853 patent and claim 1 of the 646 patent. The purpose of doing this was to provide a relatively confined framework by which a number of pleading issues could be ventilated and Upaid’s particularised case examined in what is very complex patent litigation, involving a large number of alleged infringements, in which there have been significant and ongoing pleading disputes between the parties. In this connection, Upaid says (and Telstra does not seem to dispute) that the requests made by Telstra since the period 17 March 2014 (when Upaid filed its amended particulars of infringement) to 29 August 2014 (when Telstra served its document concerning outstanding deficiencies in the particulars) have amounted to 213 pages containing some 1,860 questions or requests. Upaid’s responses have amounted to 297 pages.
21 In Upaid No 1, I stressed the importance of proper particularisation of the alleged infringements, particularly in a case having the size and complexity of the present one. In directions hearings related to the present interlocutory application, I have expressed the hopeful expectation that, by deciding the pleading disputes in respect of claim 1 of each patent, there might be a resolution of at least some of the other pleading disputes between the parties concerning the alleged infringements of other claims of each patent. Certainly, this is likely to be the case where dependent claims are in issue.
22 In this connection I note that, in respect of the 853 patent, Upaid now sues on claim 1, and claims 5, 6, 8, 10 and 13 (which are each dependent on claim 1). It also sues on claim 30, and claims 32, 36, 37, 40 and 49 (which are each dependent, or in part dependant, on claim 30). It also sues on claim 33, and claims 36, 37, 38, 41 and 49 (which are each dependent, or in part dependent, directly or indirectly, on claim 33). It also sues on claim 51.
23 In respect of the 646 patent, Upaid now sues on claim 1, and claims 2, 3, 4 and 9 (which are each dependent on claim 1). It also sues on claim 11, and claims 12, 15, 50 and 51 (which are each dependent on claim 11). It also sues on claim 54.
24 The present interlocutory application involves a consideration of six broad categories of objections in respect of claim 1 of the 853 patent and six broad categories of objections in respect of claim 1 of the 646 patent. With respect to each patent, some of these objections raise common issues across different alleged types of infringement of the one claim.
25 Section 31A of the Act provides:
31A Summary judgment
(1) The Court may give judgment for one party against another in relation to the whole or any part of a proceeding if:
(a) the first party is prosecuting the proceeding or that part of the proceeding; and
(b) the Court is satisfied that the other party has no reasonable prospect of successfully defending the proceeding or that part of the proceeding.
(2) The Court may give judgment for one party against another in relation to the whole or any part of a proceeding if:
(a) the first party is defending the proceeding or that part of the proceeding; and
(b) the Court is satisfied that the other party has no reasonable prospect of successfully prosecuting the proceeding or that part of the proceeding.
(3) For the purposes of this section, a defence or a proceeding or part of a proceeding need not be:
(a) hopeless; or
(b) bound to fail;
for it to have no reasonable prospect of success.
(4) This section does not limit any powers that the Court has apart from this section.
(5) This section does not apply to criminal proceedings.
26 Rule 26.01 of the Rules provides:
26.01 Summary judgment
(1) A party may apply to the Court for an order that judgment be given against another party because:
(a) the applicant has no reasonable prospect of successfully prosecuting the proceeding or part of the proceeding; or
(b) the proceeding is frivolous or vexatious; or
(c) no reasonable cause of action is disclosed; or
(d) the proceeding is an abuse of the process of the Court; or
(e) the respondent has no reasonable prospect of successfully defending the proceeding or part of the proceeding.
(2) The application must be accompanied by an affidavit stating:
(a) the grounds of the application; and
(b) the facts and circumstances relied on to support those grounds.
(3) The application and the accompanying affidavit must be served on the party against whom the order is sought at least 14 days before the hearing of the application.
(4) If an order is made under subrule (1) dismissing part of the proceeding, the proceeding may be continued for that part of the proceeding not disposed of by the order.
(5) If an order is made under subrule (1) giving judgment for the applicant against the respondent for the whole or part of the applicant’s claim, a respondent who has a cross‑claim against the applicant or some other party may:
(a) continue to prosecute the cross‑claim against the applicant or other party; and
(b) apply to the Court for an order staying execution on or enforcement of the judgment until the respondent’s cross‑claim is determined.
Note: See also section 31A of the Act.
27 Rule 16.21 of the Rules provides:
16.21 Application to strike out pleadings
(1) A party may apply to the Court for an order that all or part of a pleading be struck out on the ground that the pleading:
(a) contains scandalous material; or
(b) contains frivolous or vexatious material; or
(c) is evasive or ambiguous; or
(d) is likely to cause prejudice, embarrassment or delay in the proceeding; or
(e) fails to disclose a reasonable cause of action or defence or other case appropriate to the nature of the pleading; or
(f) is otherwise an abuse of the process of the Court.
(2) A party may apply for an order that the pleading be removed from the Court file if the pleading contains material of a kind mentioned in paragraph (1)(a), (b) or (c) or is otherwise an abuse of the process of the Court.
THE PATENTS AND RELEVANT CLAIMS
28 The complete specification of the 853 patent describes the field of the invention as follows:
The present invention relates to a convergent communications system for providing services to individual and corporate customers worldwide. More specifically, the invention relates to a convergent communications system that provides mobile commerce, electronic commerce and communication services through existing communication switches without specific hardware located at those switches. This system supports the use of pre-paid and post-paid accounts across heterogeneous networks to provide a large range of advanced communication services regardless of a customer’s location.
29 Examples of convergence are discussed at [0096] of the complete specification (amongst other paragraphs):
Examples of convergence are to combine a variety of technologies and media together to provide a richer level of service. For example, converged communications can combine: different media, like voice, data, messaging; mobile, fixed or satellite voice, data, messaging offered by different service providers; mobile, fixed or satellite voice, data, messaging media offered by different service providers; mobile, fixed or satellite voice, data, messaging media offered by same service provider; and mobile, fixed or satellite voice, data, messaging offered by different service providers. Converged commerce includes combining telephone, internet, e-commerce or m-commerce. Converged service includes combining communications and commerce services. Converged billing can include such features as offering a single, integrated bill for all communications services, and charges for content or goods that are delivered. Converged commerce can also refer to integrating all charges for a transaction into one transaction and cost that includes such items as surcharges, taxes, telecommunications fees, etc. Converged service can also refer to offering a single help operator that can access, view and modify a customer’s account, even if the account does not reside on a local network.
30 The complete specification says (at [0098]) that:
… a convergent communications platform can allow a variety of technologies to merge, allowing for enhanced mobile commerce, electronic commerce and customer care.
31 The complete specification discusses post-paid and pre-paid telephone access accounts. It describes a post-paid account as one established on the basis of a customer’s creditworthiness. It says that, because of arrangements between operators of different telephone networks, post-paid account users are able to make long distance telephone calls or access their home network when roaming in a visiting network. The operator of the home network stands as payment guarantor for the calls made by its customers in the visiting network. Visiting networks provide a facility for making and receiving calls to the home network subscribers and collect, process and forward the usage data to the caller’s home network for payment. The home network then pays the visiting network. However, the periodical billing of post-paid customers and the collection of money from those customers, involves delays. It is in this way that the home network stands as payment guarantor to the visiting network for calls made by its customers.
32 The complete specification says that, due to this problem, the home network is able to offer roaming only to its post-paid customers whose creditworthiness is established. With the increase in the pre-paid subscriber base, network operators worldwide want to offer roaming services to their pre-paid customers as well. But, due to the inherent nature of non-real-time processing of call usage for roaming customers, operators are not in a position to offer true pre-paid roaming to their customers.
33 The invention seeks to deal with these and other problems.
34 Claim 1 of the 853 patent is:
A convergent communications method employing a rule set, comprising:
determining, for an authorized user, at least one payment rule applicable at that time for authorizing a transaction and resultant settling of an account of the authorized user in response to an instruction received via at least one communication network;
applying the at least one payment rule for authorizing the transaction;
charging the account, according to the at least one payment rule, in real time if the transaction is authorized; and
settling charges to the account by one of a plurality of transaction providers in accordance with at least one settlement rule, said charging and settling performed utilizing at least one financial network, separate from the at least one communication network.
35 The complete specification of the 646 patent describes the field of the invention as follows:
The present invention relates to communication systems for providing services to individual and corporate subscribers worldwide. More specifically, the invention relates to an advanced intelligent communication system that provides subscriber-requested services through existing communication switches even in those circumstances in which the hardware communication switch is not configured to provide such services. The system supports the use of personal identification number (PIN) access cards for use in fixed and mobile markets from any communication device located anywhere in the world and provides flexible call processing and switching services that deliver enhanced computer telephony capabilities, utilizing standard communication equipment and operating systems.
36 Advanced communication services are exemplified as call forwarding, call conferencing, and voicemail services.
37 The complete specification describes the following prior art deficiencies:
… because such services are dependent on telephone carrier equipment, and because not all telephone switches can presently support all available advanced communication services, many subscribers are still unable to take advantage of these services at their home or at their place of business. Furthermore, even though a subscriber may have such services available at his or her normal place for communication, the services may be unavailable should the user attempt access through another person’s communication device, a personal computer, a portable telephone, or a public phone. In other words, access to such services is extremely limited – restricted by the equipment in use, the equipment offered by the telephone carrier, and the prior sign-up by the particular subscriber.
38 The complete specification continues:
Specialized equipment and proprietary software are conventionally used to provide various advanced services on a telephone system, such as abbreviated dialing, password service, automatic alarm, multiline hunting, call forwarding (busy, no reply, unconditional, and selective), call accept (selective), call back, distinctive ringing, network voice mail, and interception service. When an analog telephone switch is used in the communication network, as is the case in many remote areas, few of these advanced services are available to the customer. Similarly, if a basic digital switch is used, some of the advanced services described above may not be available depending on the software of the digital switch.
39 The complete specification describes other deficiencies in the prior art systems (ie apart from hardware and software limitations). These include limitations introduced by the payment platform utilised by the customer. For example, while pre-paid calling cards have become a convenient method by which telephone calling services can be made available to customers worldwide, regardless of the telephone being used, such calling cards do not permit access to more advanced communication services such as voicemail, call forwarding or call conferencing. Another problem is the management, tracking and accounting of transactions associated with the use of telephone calling cards through which advanced communication services may be purchased.
40 The complete specification then says:
The preferred embodiments of the present invention overcome the problems associated with existing mechanisms for delivering advanced communication services to customers, with or without use of PIN access cards by providing an easily implemented, cost-effective, “open standards” telephony solution that provides value-added services, such as voice mail, to people and businesses regardless of the sophistication of the switch to which they are connected, at a minimal cost to a local telephone company, service provider, or the subscribing consumer.
41 The complete specification also says that an object of the invention is to provide enhanced communication services to users, regardless of where the users may be located in the world and regardless of the equipment through which the communication services are directed.
42 The description of the preferred embodiments is detailed. One embodiment is described by reference to Figure 1. Figure 1 is a block diagram showing an embodiment of the invention that includes an advanced intelligent network platform executing proprietary software called CallManager and NetManager. The written description of this embodiment ranges over 10 pages. It includes many features.
43 Claim 1 of the 646 patent is:
A communication method using an enhanced services platform for providing pre-paid services and commercial transactions via a plurality of networks, comprising:
accepting, via the enhanced services platform, a request from an authenticated user for providing at least one of a communication service, a commercial transaction and user account information, the request originating from any one of a plurality of networks of different types;
verifying, via the enhanced services platform, that the authenticated user is authorized to receive the at least one of the communication service, the commercial transaction, and the user account information, and that an account associated with the authenticated user has a sufficient amount available for payment of the at least one of the communication service and the commercial transaction;
providing, via the enhanced services platform, the at least one of the communication service, the commercial transaction and the user account information based upon said accepting and verifying;
charging, via the enhanced services platform, an authorized account associated with the authenticated user for providing the at least one of the communication service and the commercial transaction, said charging including using rating engines for dynamically calculating usage charges associated with at least the communication service; and
processing, via the enhanced services platform, real-time settlement data for the at least one of the communication service and commercial transaction .
44 Telstra has adduced evidence through various witnesses who have described Telstra’s systems relevant to Upaid’s allegations of Telstra’s infringement of claim 1 of each patent. The evidence includes a description of the process of purchasing a premium MOG subscription using an internet browser on a Telstra mobile device. As will be explained in more detail, MOG is a mobile service which Upaid alleges is, amongst other mobile services, implicated in a number of the infringements that have been particularised.
45 Telstra has prepared an outline of this evidence as it is relevant to the issues arising on this application. Upaid has not challenged Telstra’s evidence or the accuracy of the outline. My own reading of the outline satisfies me that it accurately summarises the evidence. For this reason, it is convenient to rely on the outline and to adopt it (with some minor modifications) as part of these reasons. My adoption constitutes findings of fact for the purposes of this application.
46 MOG is a subscription music service offered by Telstra. For a monthly subscription price, customers are able to stream music on certain devices. They are also able to download music to their devices for off-line playback. MOG is available as a basic subscription or a premium subscription. There are a number of differences between them. For example, the premium subscription permits streaming and downloading to mobile devices using the MOG “app” whereas the basic subscription does not.
47 XXX XXXXXXX XXXXX XXXXXXXX XX XXXXXXXXXXX XXX XXXXXXXX XXX XXXXXXXXXXXXX XXX XXXXXXXXXXXX XXX XXXXXXX XXXXX XXXX XXXXXXXX XXXXXXXXXX XXXX XXX XXXXXXXXXXXXXX XX XXXXXXXXX XXXXXX XXX XXXXXXX XXXXX XXXXXXXX XXXXXXXXXXXX XXXX XXX XXX XXXXXXXXX XXXX XX XXXXXXXXXXX XXX XXXXXXXXXX XXX XXX XXXXXXX XX XXXXXXXXXXX XXX XXXXXXXX XXXX X XXXXXXXX XXXXXX XX XXX XXX XXXXXXX XX XXXXXX XXXXXX XXX XXXXXXX XXXXXXXX XXXX XXXXXXX XXX XXX XXXXXXX XX XXXXXXX XXX XXXXXXX XX XXX XXXXXXXX XXX XX XXXXXX XXX XXXXXXXXXXXXX
48 XXX XXXXXXX XXXXX XXXXXXXX XXXX XXXXXXXXXXXX XXXX XXXXXXXXX XXXXXXX XXXXXXX XXXX X XXXXXXXX XXXX XXX XXXXXXX XXXXXXXX XX XXXXXXXX X XXX XXXXXXXXXXXX XXXXX XX XXXXXXXX XXXXXXX XXXXXXXX XX XXXXXXXXX XXXXXXX XXXXXX XXXXXXXX XXXXXXX XXXXXX XXXXXXXX XXX XX XXXX XX XXXXXXXX X XXX XXXXXXXXXXXX XX XXX XX XXXXXXXXXX XXX XXXXXX XXXXXXXXX XXXXXXXX XXX XXXXXXX XX XXXXXXXXXXXX XXXXXXX XXXXXX XXXXXXXXX XXXXX XXX XX XXXXXX XXXXXXXX XX XXXXXXXXXX
Establishing a pre-paid Telstra mobile account
49 For a pre-paid account, the customer pays before acquiring a product or service. A pre-paid mobile account is typically established by purchasing a pre-paid mobile device and a pre-paid sim starter pack which includes an amount of credit in a pre-paid account for purchasing certain products or services for use on a mobile device and signing up for a pre-paid service plan on specified terms and conditions. The customer tops up the credit in the account from time to time.
50 After a pre-paid service is purchased, the customer’s account is activated. Typically, if a pre-paid mobile package is purchased in a Telstra store, the Telstra staff member will activate the account. XXXX XXXX XX XXXXX XX XXXXXXX XX XXXXXXX XX XXXXXXXXX XXXXXXXX XXXXXXX XXXXXXX XXX XXXXXX XXXXXX XX XXX XXXXXXX XXXXXX XXXX XXXXXX XXXXXXX XXX XXXXXXXX XXXXXX XXXXXXXXX XXXX XXXXXX XXXXXXX XXXXXXX XXXXXXXXX XXXXXXX XXX XXXXXXX
Establishing a post-paid Telstra mobile account
51 For a post-paid account, the customer pays after acquiring a product or service. The customer selects a plan on specified terms and conditions under which the customer is billed periodically (typically monthly) for mobile products and services acquired in the preceding period.
52 As described above in relation to pre-paid mobile accounts, the user’s account is activated. When this is done, an account is created in the particular Telstra billing system which is used for post-paid accounts. XXX XXXXXXXXXX XXXX XX XXX XXXXXXX XXXXXXX XXX XXX XXXXXXX XXXXXXXXX XXXX XX XXX XXXXXX XXXXXXX XXX XXXXXXXXX XXXXXX XX XXXX XXXX XXX XXXXXXXXX XXXX X XXXXXX XXX XXXXXXXXXXXX XXXXX XXXXXXX XXXXXX XXXXXXX XXXXXXXXX XXXXXXX XXX XXXXXXX XXX XXXXXXXX XXXXXXX XXXXXX
Creating a BigPond Music account
53 A customer can purchase a premium MOG subscription using an internet browser on a mobile device by navigating to the website www.bigpondmusic.com and clicking on the link for the premium MOG subscription. The price of the subscription is advertised on the web page, such that the customer is able to identify the price prior to requesting the subscription. Presently, a customer may choose to receive a 14 day trial, or skip the trial and purchase the subscription straight away. The latter alternative is discussed in this section of my reasons.
54 The customer must first establish a BigPond Music account. It is a profile for the use of the BigPond Music service, and includes the customer’s name, personal details and other aspects relating to the customer’s use of the MOG service. The BigPond Music account is not a billing account. It is not charged or billed and payments are not made to it. The Telstra accounts which are used in these processes are described in more detail below.
55 Once the customer has established a BigPond Music account, he or she is presented with three options for paying for the MOG subscription, namely: “Pay with my Telstra Mobile” (which can be pre-paid or post-paid), “Pay using a new credit card” or “Add to my BigPond Broadband Bill”. A BigPond Broadband account is associated with a broadband internet service, and is a different account from a Telstra mobile account, which is associated with a pre-paid or post-paid service plan. The following sections describe the process of paying with a Telstra mobile account (pre-paid and post-paid) and paying with a credit card.
Pay with my Telstra Mobile—pre-paid
56 The customer inserts his or her mobile number in the field provided on the web page. If the request is not made from the mobile device itself, a further verification is required using an SMS message sent to the device. X XXX XXXXXXX XXXXX XXXXXXXX XX XX XXXXX XXXXXXXX XXXX XXX XXXXXX XXXXXX XX X XXXXX XXXXXXX XXXXXX XXXXXX XXXX XX XXX XXXXXXXX XX XXX XXX XXXXXX XX XXXX XX XXXXX XXXXXXX XX XXXXXXXX XX XXX XXXXXXXX XXX XXX XXXXXXX XXXXX XXX XXXXX XXX XXXXXX XX XXX XXXXXX XX XXXXXXXXX XX XXXXXXXXX XX X XXXX XX XXXXXXX XXXXXXX XXXXXX XX XXXX XXXXXXXXX XX XX XXX XXXXX XXXXX These prices have been previously specified for the products by the responsible group within Telstra and recorded by the appropriate platform. In the case of MOG, the price of $11.99 for the premium subscription service is a fixed price specified and advertised by the BigPond Music group and recorded in XXX XXXXXXX XXXXX XXXXXXXXX
[Redacted]
57 XXX XXXXXXXXXXXX XXX XXX XXXXXXX XXXXXXX XXX XXXXXX XX XXXXXX XX XXXXXXX XXX XXXXXXX XXXXX XXXXX XX XXXXX XXX XX X XXXXXXX XXXXXX XX XXXXXXXXXX XXX XXXXXXX XXXXXX XXXXXXX XXXXXXXXXX XXXX XXX XXXXXX XXXXXX XXX XXXXXXXXXX XXX XXXXXXXXXXX XXXXXXX XXXXXX XXX XXXX XXXXXXXX XX XXXXXX XXXXXX XXXXXXX XXXXXXX XXXXXX XXX XXXX XXXXX XXX XXXXXXXXXX XX XXXXXXXXX XXXXX XX XXXXXXX XXXXXXXXX
58 XXXX XXX XXX XXXXXXXXXX XXX XXXXXXXXXX XXXXXXXX XXXXXXX XXX XXXXXXX XXXXXXX XX XXXXXXXXXXXX XXX XXXXXXX XXXXXX XXX XXXXXX XX X XXXXXX XXXXXXXX XX XX XXXXXX XXX XXXXXXXXXXXXX XXX XXXXXXX XX XXXXXX
[Redacted]
59 XXXX XXXXXX XXXXXX XXXXX XX X XXX XX XXX XXXXXXXX XXXX XX XXXXXXXX XX XXXX XXXXXX XXXX XXXXXX XXXXXX XXX XXXXXXXX XXX XXXXXXXXXX XXXXXXX XX XXX XX XXX XXXXXXX XXX XXX XXXXXXXXXXXX XXXXXX XXXXX XXXX X XXXXXXX XX XXXX XXXXXXXXXX XXXXXXX XXX XXXXXXX XX XXXXXXXXXXX XX XX XX XXXX XX XXXXX XXXXXXX XX XXXXXXXXXX XXX XXX XXXXXXXX XX XXXXXXXX XX XXXXXXXX XXX XX XXX XXXXXXXX XXXXXXX XX XXXXXXXX
[Redacted]
60 XX XXX XXXXXXX XX XXXXXXXXXXX XXXXXX XXXXXXX XXX XXXXXX XX X XXXXX XX XXX XXXXXXXXXX XXXXXXX XXX XXX XXXXXXX XXXXXXX XX XXXXXXX XXXXXXXXXXXX XX XXXXXXXXXX XXXX XXX XXXXX XXX XXXXXXXXXX XXXXXXXXX XX XXX XXXXXXXXXX XXXXXXXX XXXXXX XXXXX
[Redacted]
61 XXXXXX XXXXXXXX X XXXXXXXXXXXX XX XXXX XXXX XXX XXXXX XXX XXXX XXXXX XXX XXXX XXXXXXXXXXXX XX XXXXXXXXXXXX XX XXX XXXXXXX XXXXX XXXXXXXX XXX XXX XXX XXXX XXX XXXXXXX XXXXX XXXXXXXX XXXXXX X XXXXXX XX XXX XXXXXXXXXX XXXXXXXXXXXX XXX XXXXXX XX XXX XXXXXXXXXX XXXXXXXXXXXX XXX XXXXXXX XXXX XX XX XXXXXXX XXXX X XXXXXX XXXXXXXX XX XXXXXX XXXXX XXXXXXX XXX XXX XXXXXXXX XXX XXX XXXXXXXX XX XXXXXXXXX XX XXX XXXXXXX XXXXX XXXXXXX XX XXXXXXX XXX XXXXXXX XX XXX XXXXXXXXXXXX XX XXXXXXX
Pay with my Telstra mobile—post-paid
[Redacted]
62 XX XXX XXXX XX XXXXXXXXXX X XXX XXXXXXXXXXXX XXXXX X XXXXXXXXX XXXXXX XXXXXXXX XXXX XXX XXX XXXX XXXXXXX XXX XXXX XXXXXXXXX XX XXX XXXXXXXX XXXXXXXX XXXXXXXXX XXXXXX XXX XXXXXXX XXXXXXX XXX XXXXX XX XXXX XXXXXX XX XX XXX XXXXXXXXXX XXXXXXX XXXXXX XXX XXXXXXXXX XXXXXXXXX XXXXXX XXXXXX XXXX XX XXXXXXXX
[Redacted]
63 XXXXX X XXXX XXXXXXX XXXXXXXX XXX XXXXXX XXXX XXXX XXX XXXXXXX XXX XXXXXX XX X XXXXX XXXXXXX XXX XXXXXXXXXX
[Redacted]
64 XXXX XXX XXXXX XXX XXXX XXXXXXXXX XXXXX X XXXX X XXXXXXX XXXXXXXX X XXXXXXXXXXXX XX XXXX XXXX XXX XXXXX XXX XXXX XXXXX XXX XXXX XXXXXXXXXXXX XX XXXXXXXXXXXX XX XXX XXXXXXX XXXXX XXXXXXXX XXX XXX XXX XXXX XXX XXXXXXX XXXXX XXXXXXX XXXXXXX X XXXXXX XX XXX XXXXXXXXXX XXXXXXXXXXXX XXX XXXXXXX XXXX XX XX XXXXXXX
65 The MOG subscription continues on a monthly basis unless cancelled by the customer. XX XXX XXXXXXX XXXXXXXXXXX XX XXX XXXXXXXXXXXX XXXXX XXX XXXXXXX XXXXX XXXXXXXX XXXXXXXXX X XXXXXX XXX XXX XXXXXXX XXXXXXXXX XXXXX XXX XXXXXXXX XXX XXXXXXXXX XXXXXX XXXXXXXX XX XXXXXXXXX
66 The processes described in [53]-[65] above do not involve at any stage:
verifying that any amount owed to Telstra will be paid by a financial institution;
utilising any information obtained from such a verification;
interrogating or communicating with the network of a financial institution; or
recording to a customer’s account that an amount owed to Telstra will be discharged by a financial institution.
67 The only verification steps which are applied in order to permit the transaction to proceed involve the customer’s Telstra account, as described above, not the account of a financial institution.
68 In the case of a pre-paid mobile account, the processes described above do not involve any interrogation or recording of the manner in which the customer supplied the credit available in the Telstra pre-paid account. In the case of a post-paid mobile account, the processes described above do not interrogate or record the manner in which the customer will ultimately pay his or her bill.
69 Paragraphs [66]-[68] above apply equally to any other product purchased using the customer’s pre-paid or post-paid mobile account.
70 When the customer chooses “pay using a new credit card”, the customer is prompted to enter his or her credit card details. The credit card payment process uses Telstra’s “Billpay" system. XXXXXXX XXXXXXXX XXXXXXX XXX XXXXXXX XX XXXXXXXXXX XX XXX XXXXX XXXX XXXXXXXXX XX XXXX XX XXXXXXX XX XXXXX XXXXXXX XX XXX XXXXXXXX XXXXXXXXXX XXX XXXXXXX XX XXXXXXXXX XXX XXXXXXX XXXXXXXXXXXX XX XXX XXXXXXX XXXXX XXXXXXXX XXXX XXX XXXXXXX XXX XXXX XXXXXXXXXXX XXX XXXXXXX XXXXXXXX XXXXXXX XXX XXX XXXXXXXXXXXX XXX XXXXXXX XXXX XX XX XXXXXXX XXXXXXXXXX XXXXXX XX XXX XXX XXXXXXX XXX XXX XXX XXXXXXXXX
71 XXXXXXX XXXX XXX XXXXX XX XXX XXX XXXXXXX XXXXXXXXX It is a system for making payments. The process of making a credit card payment for a MOG subscription does not involve a Telstra customer account, and does not involve Telstra’s account billing systems.
72 This is an ordinary use of a credit card account with a bank to order services.
Pre-paid recharge; post-paid bill payment
Introduction
73 The following paragraphs describe the process of recharging a pre-paid account and paying a bill for a post-paid account.
74 A pre-paid mobile account can be topped up in a variety of ways. The terms and conditions for recharging the account, including how the account can be recharged and the timing of payments, are specified in the terms and conditions for the pre-paid plan. One way of topping up the account is by making an ad hoc payment at a time and in an amount of the customer’s choosing using the online service at www.telstra.com.au/myaccount. The customer can access his or her account details using this service by entering a username and password associated with the account. XXX XXXXXX XXXXXXX XXXX XX XXXXXXXXXXX XXXXX XX XXXXXX XXXXXXX XX XXXX XXX XXXXXXXXX XXX XXXXXXXXXX XXXXXXX XXXXXXX XXXX XXXXXXX The customer can then navigate to the payment function. Upon requesting a credit card payment, the customer is directed to a website operated by XXX XXXXXXX XXXXXXX XXXXXXX XXXXXXXX XXXXXXX XXX XXXXXXX XX XXXXXXXXXX XX XXX XXXXXX XXXX XXXXXXXXX XX XXXX XX XXXXXXX XX XXXXX XXXXXXX XX XXX XXXXXXXXX XX XXX XXX XXXXXXX XX XXXXXXXX XXX XXXXXXX XXXXXXXXXXXX XX XXXXXX XXXX XXX XXXXXXX XXX XXXX XXXXXXXXXXX XXXXXX XXXXXXX XXX XXXXXXXXXX XXXXXXXX XXXXXX XXXXXXX XXX XXXXXXXXX XXX XXXXXXX XXXXXXXXXXXX A payment may be made successfully in this way regardless of the amount of the payment or the time at which payment is made, as the customer is free to choose the amount and timing of ad hoc recharges.
75 A bill for a post-paid mobile account can be paid in a variety of ways. The terms and conditions for paying the bill, including how the bill can be paid, and the time for paying the bill, are specified in the terms and conditions for the post-paid plan. One way of making a bill payment is by making a credit card payment using the online service at www.telstra.com.au/myaccount, as described above in relation to pre-paid mobile accounts at a time and in an amount of the customer’s choosing. XX XXX XXXX XX XXXXXXXXX XXXXXX XXXXXXXXX XXX XXXXXXXXX XXX XXXXXXX XXXXXXX XXXX XXXXX X XXXX X XXXXXXXX XX XXX XXXX XXX XXX The customer can then navigate to the payment function. Upon requesting a credit card payment, the customer is directed to a website operated by XXX XXXXXXX XXXXXXX XXXXXXX XXXXXXXX XXXXXX XXX XXXXXXX XX XXXXXXXXXX XXX XXX XXXXXX XXXX XXXXXXXXX XX XXXX XX XXXXXXX XX XXXXX XXXXXXX XX XXX XXXXXXXXX XX XXXX XXX XXXXXXX XX XXXXXXXX XXX XXXXXX XXXXXXXXXXXX XX XXXXX X XXXX X XXXXXXX XXXX XXX XXXXXXX XXX XXXX XXXXXXXXXXX XXXXX X XXXX X XXXXXXX XXXXXXX XXX XXXXXXXXXX XXXXXXXX XXXXXX XXXXXXX XXX XXXXXXXXX XXX XXXXXXX XXXXXXXXXXXX A payment may be made successfully in this way even if it is after the date due for payment, or for an amount less than the amount of the bill.
Financial institution
76 The processes described in [74]-[75] above do not involve:
verifying that any amount owed to Telstra will be paid by a financial institution;
utilising any information obtained from such a verification.
77 Rather, when the customer selects the option of paying using their credit card, Billpay contacts the relevant card issuer and if the payment is authorised, executes the payment. There is no separate verification step occurring prior to this.
78 The processes described at [53]-[75] above are no different if the customer is roaming. The customer may incur roaming charges for using the internet in the course of purchasing the MOG subscription. However, the process of obtaining and paying for the MOG subscription is the same.
Streaming / downloading music using MOG
79 The transmission of data to a Telstra mobile device may be metered or unmetered. Charges are applied to mobile accounts for metered data sessions. XXX XXXXXXX XXX XXXXX XXXXXXXX XXX XXXXXXX XX XXXXXX XXXX XXXXXXXX XXXXXX XXXXXXXXX XX XXXX XXXX XXXXXXXXX XXXXXX XXXXXXXXX XXXX XX XXXXXXXXX XX XXX XXXXXXX XX XXXXXXXXXX XX XXXXXXX XXXXX XXXXX XX XXXX
80 Some Telstra products involve metered data sessions and others are unmetered. In the case of MOG, once a MOG subscription has been purchased, Telstra does not charge for the usage of MOG. The usage of data as part of the MOG service in Australia is unmetered.
Access network / transport network
81 The particulars include the following definition of “access network” and “transport network” as applied to Telstra’s 3G, NextG and 4G mobile telecommunications networks:
In general terms, the access network is the part of the network that conveys the communication from the user to a mobile telecommunications tower using the radio spectrum and the transport network is the part of the network that conveys the communication from the tower to the recipient (who may be receiving the communication through use of a separate access network).
82 A customer’s request to purchase a MOG subscription, or to recharge a pre-paid account, or to pay a post-paid account bill, as described above, does not originate from Telstra’s transport network, so understood. The request originates from the user’s device, which must first use the access network in order to communicate on the network. The transport network is used to transport the request from one part of the network to another after the request has been initiated.
83 Upaid relied on evidence from:
Robert John Nicholls;
Amant Singh Bagga; and
Stephen Gibb.
84 Dr Nicholls is an engineer specialising in communications technologies. He described himself as a “consultant in the field of technology, associated strategy and access regulation in the communications and networked industry sectors.”
85 He is a Research Fellow at the Institute for Social Research at Swinburne University of Technology where his research seeks to identify and assess the economic and policy consequences of innovative wireless applications. He is also a Research Fellow at the Centre for International Finance and Regulation where he investigates the intersection between financial services regulation and competition law. Since July 2012, he has been the Independent Telecommunications Adjudicator, handling and investigating certain disputes between one or more Telstra Wholesale Customers and Telstra. He is also a member of the NBN Co arbitration pool.
86 Dr Nicholls made an affidavit concerning the 853 patent and the 646 patent. He set out his understanding of a number of expressions used in claim 1 of each patent. He discussed a number of background matters relevant to each claimed invention.
87 Telstra provided a list of objections to Dr Nicholls’ evidence, although I was not asked to rule on these objections at the hearing. In general terms, Telstra submits that the admissibility and weight of Dr Nicholls’ evidence is affected by a number of matters. First, Telstra submits that Dr Nicholls purports to give evidence of the construction and application of ordinary words which are not, and not said to be, terms of art. Secondly, Telstra submits that Dr Nicholls frequently expresses opinions which are no more than assertions which are either not supported by reasoning or not supported by matters of expertise. Thirdly, Dr Nicholls was presented with the particulars at the time of receiving his instructions from Upaid’s solicitors, and was asked to express his views having read that document. I will deal with relevant aspects of Dr Nicholls’ evidence when considering Upaid’s responses to the various objections to the particulars on which Telstra relies. However, for the avoidance of doubt, I will admit the following paragraphs (or parts of paragraphs) of Dr Nicholls’ affidavit subject to a limitation under s 136 of the Evidence Act 1995 (Cth) that they be treated as submission only: 60 (second to fourth sentences), 63 (second sentence), 65-69, 70 (second and third sentences), 74 (second sentence), 78 (second sentence), 99 (second and third sentences), 105 (second sentence), 106 (third to fifth sentences), 112 (second sentence), 113, 115 (second sentence), 116, 117 (second sentence to end of paragraph), 119-120, 136, 138-146, 149-159, 172-179, 181-183, 186-193, 198, 203-205, 207, 208 (all but first sentence), 212, and 215-220. I admit paragraphs 102-104 over Telstra’s objection.
88 Mr Bagga is a project analyst in the Applied Legal Technology Team at Upaid’s solicitors. He made an affidavit in which he described various activities he undertook in connection with a Telstra pre-paid plan and a Telstra post-paid plan.
89 With respect to the pre-paid plan, Mr Bagga described:
subscribing to the plan;
purchasing a premium MOG subscription using a debit card;
attempting to purchase a premium MOG subscription using incorrect credit card details;
subscribing for a free trial of a MOG subscription using a credit card;
cancelling and resuming a MOG trial subscription;
purchasing a premium MOG subscription using pre-paid credit on the plan;
attempting to purchase a premium MOG subscription using pre-paid credit from another pre-paid plan;
using MOG on a pre-paid plan; and
recharging a pre-paid plan using MyAccount.
90 With respect to the post-paid plan, Mr Bagga described:
subscribing to the plan;
purchasing a premium MOG subscription using a credit card;
purchasing a premium MOG subscription using the Telstra account associated with the plan;
attempting to purchase a premium MOG subscription on the plan using pre-paid credit from a pre-paid plan; and
bill payment.
91 Mr Bagga also described purchasing a basic MOG subscription on a notebook computer using a credit card.
92 Mr Gibb is Upaid’s Chief Information Officer. He made an affidavit in which he described various activities he undertook in connection with a Telstra pre-paid plan and a Telstra post-paid plan.
93 With respect to the pre-paid plan, Mr Gibb described:
purchasing a MOG subscription using a credit card while roaming in the United States;
purchasing a MOG subscription using a credit card while roaming in France;
purchasing a MOG subscription using a credit card while roaming in the United Kingdom;
using MOG while roaming in the United States; and
using MOG while roaming in France.
94 With respect to the post-paid plan, Mr Gibb described:
purchasing a MOG subscription using a credit card while roaming in France; and
purchasing a MOG subscription using the Telstra account associated with the plan while roaming in France.
95 In Upaid No 1, I discussed the requirement of r 34.42(3) of the Rules that particulars of infringement of a standard patent must give at least one instance of each type of infringement alleged. I also discussed what constitutes a “type” of infringement: see at [26]-[43]; see also [67]-[74] thereof.
96 The particulars in relation to the infringement of claim 1 of the 853 patent specify six types of infringement, designated as:
Post-Paid Service Plans (Digital Purchase);
Pre-Paid Service Plans (Digital Purchase);
Post-Paid Bill Payment;
Pre-Paid Service Plans (Recharge);
International Roaming: Post-Paid Service Plans (Digital Purchase); and
International Roaming: Pre-Paid Service Plans (Digital Purchase).
97 As particularised, the last two types of infringement concerning international roaming are essentially the same as the first two types of infringement, except that the user is engaged in international roaming. The particulars do not appear to identify any material difference arising from the fact of international roaming other than that a connection is made across heterogeneous networks. The existence of heterogeneous networks is not of relevance to the present application. Telstra says that, as a matter of fact, its systems operate no differently in relevant respects when a customer is engaged in international roaming. Subject to one matter referred to [325] below, Upaid has not challenged that proposition. For this reason, Telstra has not treated the last two types of infringement differently from the first two types, respectively.
98 The particulars in relation to the infringement of claim 1 of the 646 patent also specify six types of infringement, designated as:
A Pre-Paid Service User Acquiring a Third Party Product While Not Roaming;
A Pre-Paid Service User Acquiring a Telstra Product While Not Roaming and Paying for it by Credit / Debit Card;
A Pre-Paid Service User Making Phone Calls To / Receiving Phone Calls From A Non-Telstra Network;
A Pre-Paid Service User Acquiring a Product While Roaming;
A Pre-Paid Service User Using Data Services While Roaming; and
A Pre-Paid Service User Making / Receiving Phone Calls While Roaming.
99 The particulars are 171 pages in length. They are prefaced by a number of definitions. The particulars also contain schedules.
100 It is necessary to refer to only some of the definitions.
101 A Financial Provider is defined as a financial institution described in Part C of Schedule 1 to the particulars (Schedule 1).
102 Post-Paid Service Plans are defined by reference to a description of 12 post-paid service plans offered by Telstra for individuals and 17 post-paid service plans offered by Telstra for small business identified in Part A1 of Schedule 1.
103 Pre-Paid Service Plans are defined by reference to a description of five pre-paid service plans identified Part A4 of Schedule 1.
104 Telstra’s Communications Network is defined as at least one of Telstra’s 3G, NextG and 4G mobile communications networks. These networks include one or more access networks and one or more transport networks. An access network is the part of the network that conveys the communication from the user to a mobile telecommunications tower using the radio spectrum. The transport network is the part of the network that conveys the communication from the tower to the recipient. The recipient may be receiving the communication through a separate access network.
105 A user account and similar expressions mean one or more accounts within Telstra’s system which correspond to or are associated with a Post-Paid Plan or a Pre-Paid Plan to which a user has subscribed.
106 Parts A2, A3, A5 and A6 of Schedule 1 list and describe certain data packs that are relevant to Upaid’s particularised case.
107 Part B1 of Schedule 1 lists 29 services provided by Telstra and Part B2 lists seven services provided by third parties that are relevant to Upaid’s particularised case.
108 Schedule 2 to the particulars (Schedule 2) identifies and lists 44 enhanced communication services that are relevant to Upaid’s particularised case.
Upaid’s Particularised Case: claim 1 of the 853 patent
Introduction
109 The following is a summary of each type of infringement of claim 1 of the 853 patent as particularised. I have included a reference to the relevant paragraph numbers in the particulars.
Post-Paid Service Plans (Digital Purchase)
110 This alleged type of infringement concerns the purchase of products using the user’s Post-Paid Service Plan with Telstra.
111 Members of the public have subscribed to certain Post-Paid Service Plans (described in Part A1 of Schedule 1) and have thereby become authorised by Telstra to use Telstra’s Communications Network. Certain data packs (described in Parts A2 and A3 of Schedule 1) and mobile services (described in Part B of Schedule 1) are available to authorised users for purchase. The particulars refer to the Post-Paid Service Plans, data packs and mobile services as, collectively, “products”: paras 1.2 and 1.3.
112 The products are supplied by Telstra or third parties. The products provided by third parties are provided by third parties to Telstra for sale (or other provisions) to Telstra’s customers: para 1.4.
113 Telstra is a transaction provider for all products provided by Telstra and for all transactions where the authorised user pays Telstra as part of the transaction (ie where the price for the product is charged to the user’s Telstra account). Both Telstra and third parties act as transaction providers for products provided by third parties. A Financial Provider is also a transaction provider in all transactions: para 1.4.
114 Authorised users have instructed Telstra via Telstra’s Communications Network that they wish to purchase a product from among those described: para 1.6.
115 Telstra has determined for each authorised user at least one payment rule from a rule set by which the price to be charged to the user’s Telstra account for the transaction, together with provisions by which the user will be required to pay the amount, is determined: para 1.7.
116 In response, Telstra has applied the payment rule and thereby approved the user to purchase the product at the price and on the terms specified. This constitutes Telstra “authorising” the transaction: para 1.8.
117 Telstra has verified with a Financial Provider via a financial network (of that Financial Provider) that the amount owed to Telstra will be paid by the Financial Provider. The financial network is separate from Telstra’s Communications Network: para 1.8A.
118 Telstra has supplied the product to the approved authorised user and, using the verification information (see para 1.8A), charged, in real time, the user’s Telstra account in accordance with the payment rule (ie Telstra has recorded the price for the acquisition of the product as a debit against the user’s Telstra account). The user has a contractual obligation to pay to Telstra the amount charged: para 1.9.
119 Telstra has determined at least one settlement rule from a rule set by which an amount for the product will be settled to the user’s Telstra account and the amount owed to Telstra will be paid by a Financial Provider: para 1.10.
120 Using the verification information (see para 1.8A), Telstra has settled the value of the user’s Telstra account in accordance with the settlement rule, thereby settling the charge by recording to the user’s Telstra account that the obligation to pay Telstra will be discharged by the Financial Provider: para 1.11.
121 In the additional particulars relating to paras 1.1-1.11, Upaid says that “by providing telecommunications services together with other services such as data and multimedia to authorised users, as described in paragraphs 1.1-1.11, Telstra is using a convergent communications method”: (para (a)). Upaid also says that the rule set employed in the method includes one or more rules for payment, as described in para 1.7, and one or more rules for settlement, as described in para 1.10: para (b).
122 In the context of the allegations of infringement of claim 1 of the 853 patent, I will refer to this alleged type of infringement as the Type 1 infringement.
Pre-Paid Service Plans (Digital Purchase)
123 This alleged type of infringement concerns the purchase of products using the user’s Pre-Paid Service Plan with Telstra.
124 Members of the public have subscribed to certain Pre-Paid Service Plans (described in Part A4 of Schedule 1) and thereby become authorised by Telstra to use Telstra’s Communications Network. Certain data packs (described in Parts A5 and A6 of Schedule 1) and mobile services (described in Part B of Schedule 1) are available to authorised users to purchase. The particulars refer to the Pre-Paid Service Plans, data packs and mobile services as, collectively, “products”.
125 The description of this type of infringement corresponds closely to the description of the Type 1 infringement summarised at [110]-[122] above. Specifically, paras 1.15-1.22 of the particulars correspond to paras 1.4-1.11, respectively, and additional paras (a) and (b) relating to paras 1.12-1.22 correspond to additional paras (a) and (b) relating to paras 1.1-1.11, respectively, subject to the following important exceptions.
126 First, authorised users have instructed Telstra via Telstra’s Communications Network that they wish to purchase a product among from those described: para 1.17.
127 Secondly, with respect to charging, Telstra has supplied the product to the authorised user and, using the verification information (see para 1.19A), charged, in real time, the authorised user’s Telstra account in accordance with the payment rule (ie Telstra has recorded the price for the acquisition of the product as a debit against the user’s Telstra account “and/or decremented [the account] by the amount of the price charged for [the transaction]”). The user has a contractual obligation to pay to Telstra the amount charged: para 1.20.
128 In the context of the allegations of infringement of claim 1 of the 853 patent, I will refer to this alleged type of infringement as the Type 2 infringement.
Post-Paid Bill Payment
129 This alleged type of infringement concerns paying a bill issued by Telstra in relation to the user’s Post-Paid Service Plan with Telstra.
130 Telstra has billed authorised users of its Post-Paid Service Plans (see [102] above) for products purchased by those users. Each activity by which an authorised user pays a bill constitutes a transaction: para 1.23.
131 Authorised users have instructed Telstra via Telstra’s Communication Network that they wish to pay a bill that has been rendered by Telstra: para 1.24.
132 Telstra has determined for each authorised user at least one payment rule from a rule set by which the value adjustment of the user’s Telstra account for the transacation, together with the time at which the authorised user will be required to pay that account, is determined. The value adjustment refers to the fact that the value of the user’s Telstra account will be adjusted to reflect the amount of the bill which will be paid: para 1.25.
133 In response, Telstra has applied the payment rule and thereby approved the authorised user’s bill payment. This constitutes Telstra “authorising” the transaction: para 1.26.
134 Telstra has verified with a Financial Provider via a financial network (of that Financial Provider) that the amount owed to Telstra for the bill will be paid by the Financial Provider. The financial network is separate to Telstra’s Communications Network. The authorised user has a contractual obligation to pay to Telstra the amount stated on the bill: para 1.26A.
135 Where a user has paid a bill using a Financial Provider, Telstra and the Financial Provider are transaction providers: para 1.27.
136 Telstra has applied the payment rule to effect payment of the bill. It has charged the approved authorised user’s Telstra account in real time, using the verification information (see para 1.26A): para 1.28.
137 Telstra has determined at least one settlement rule from a rule set by which payment of the bill will be credited to the user’s Telstra account and the amount owed to Telstra will be paid by the Financial Provider: para 1.29.
138 Using the verification information (see para 1.26A), Telstra has settled the value of the user’s Telstra account in accordance with the settlement rule, thereby settling the charges by recording to the user’s Telstra account that the obligation to pay Telstra will be discharged by the Financial Provider: para 1.30.
139 Upaid has provided additional particulars relating to paras 1.23-1.30 in terms materially the same as the additional particulars referrable to the Type 1 infringement and the Type 2 infringement: see [121] above.
140 In the context of the allegations of infringement of claim 1 of the 853 patent, I will refer to this alleged type of infringement as the Type 3 infringement.
Pre-Paid Service Plans (Recharge)
141 This alleged type of infringement concerns a user recharging his or her Pre-Paid Service Plan with Telstra.
142 Telstra has sold mobile phone voice and data services to authorised users of its Pre-Paid Service Plans described in para 1.12 of the particulars: para 1.31.
143 Authorised users have instructed Telstra via Telstra’s Communications Network that they wish to purchase Pre-Paid Credit to be allocated to Pre-Paid Accounts which the users already have with Telstra. This is for the purpose of “recharging” these accounts (ie increasing the amount credited to the users in the accounts): para 1.32.
144 Telstra has determined for each authorised user at least one payment rule from a rule set by which the value adjustment of the user’s Telstra account for the transaction, and the terms by which the value adjustment will be made, are determined. An amount payable for the purchase of the Pre-Paid Credit will adjust the value of the user’s Telstra account by being recorded as a credit to the account: para 1.33.
145 Where a user has purchased Pre-Paid Credit using a Financial Provider, Telstra and the Financial Provider are transaction providers: para 1.34.
146 In response to receiving a request from an authorised user to purchase a Pre-Paid Credit, Telstra has applied the payment rule to approve payment for the purchase of the Pre-Paid Credit. This approval constitutes Telstra “authorising” the transaction: para 1.35.
147 Telstra has verified with a Financial Provider via a financial network (of that Financial Provider) that the amount owed to Telstra for the Pre-Paid Credit will be paid by the Financial Provider. The financial network is separate from Telstra’s Communications Network. The user has a contractual obligation to pay to Telstra the value of the Pre-Paid Credit which the user has purchased: para 1.35A.
148 In response to receiving a request from an approved authorised user to increase that person’s account value, Telstra has “adjusted”, in real time, an amount equal to the amount specified by Telstra for the Pre-Paid Credit from the user’s Telstra account. This is by charging the user’s Telstra account in accordance with the payment rule using the verification information (see para 1.35A): para 1.36.
149 Telstra has determined at least one settlement rule from a rule set by which a payment for Pre-Paid Credit will adjust the value of the user’s Telstra account by recording a credit to the user’s Telstra account and the amount owed to Telstra by the user will be paid by the Financial Provider: para 1.37.
150 Using the verification information (see para 1.35A), Telstra has settled the value of the user’s Telstra account in accordance with the settlement rule, thereby settling the charge by recording to the user’s Telstra account that the obligation to pay Telstra will be discharged by the Financial Provider: para 1.38.
151 Upaid has provided additional particulars relating to paras 1.31-1.38 in terms materially the same as the additional particulars referrable to the earlier types of infringement: see [121] above.
152 In the context of the allegations of infringement of claim 1 of the 853 patent, I will refer to this alleged type of infringement as the Type 4 infringement.
International Roaming: Post-Paid Service Plans (Digital Purchase) / International Roaming: Pre-Paid Service Plans (Digital Purchase)
153 As I have noted, for the purposes of this application, Telstra has not treated these two types of alleged infringement differently from the first two types. For this reason, it is not necessary for me to summarise the particulars given with respect to them. However, for the purposes of identification, and in the context of the allegations of infringement of claim 1 of the 853 patent, I will refer to these alleged types of infringement as the Type 5 infringement and the Type 6 infringement, respectively.
objections to the particularised case: claim 1 of the 853 patent
Introduction
154 Telstra’s objections fall within the following broad categories:
The products the subject of the “transaction” (Objection 1);
“Convergent communications method” (Objection 2);
Determining and applying steps—the “payment rule” (Objection 3);
Charging and settling steps—“charging” and “settling” (Objection 4);
Charging and settling steps—utilising a “separate” financial network (Objection 5);
Settling step—“plurality of transaction providers” (Objection 6).
Post-Paid Service Plans (Digital Purchase): the Type 1 infringement
Objection 1: The products the subject of the “transaction”
155 Telstra submits that there is a lack of clarity in the particulars as to the identification of the products the subject of the “transaction” of the claimed method. Claim 1 refers to a method for a transaction that involves someone who is already an authorised user. However, Upaid’s particulars refer to the acquisition of “products” in terms which include the service plan itself, by which a person becomes an authorised user. Telstra submits that the particulars therefore conflate the means by which a person has the status of an authorised user (for the purposes of the claimed method) and the transaction that is to be authorised as part of the claimed method.
156 Telstra submits that if, contrary to its submission above, “products” is to be taken as including services available to an authorised user under the Post-Paid Service Plans (Digital Purchase) themselves—which is the literal reading of para 1.3 of the particulars—then no services are specified in this regard in the particulars and no indication is given as to how the provision of those services engage the features of the claim. Telstra argues that this problem is compounded by the reference in the particulars to the data packs as “products”. It submits that it is unclear whether the “transaction” is the acquisition of the data pack itself or something else. If it is not the acquisition of the data pack, then the particulars are not clear as to what is being acquired.
157 Upaid submits that this objection should be rejected because the products of the transaction are referred to in para 1.5 of the particulars. Upaid says that these products are the data packs and mobile services (which include the MOG product) identified in Parts A2, A3 and B of Schedule 1. Upaid says that it does not rely upon the subscription by the user to a service plan identified in Part A1 as constituting a transaction.
158 I accept Telstra’s submission. Upaid’s definition of “products” explicitly includes the plans identified in Part A1 of Schedule 1. Paragraph 1.6 of the particulars states that authorised users have instructed Telstra via Telstra’s Communications Network that they wish to purchase products from amongst a group of products which include each of the service plans identified in Part A1 of Schedule 1. The case which Upaid advances in submissions is not the case it has particularised.
159 I also accept Telstra’s submission that Parts A2 and A3 of Schedule 1, to the extent that they refer to “services provided under” the data packs, are unclear and insufficient in that they fail to distinguish whether the transaction is the acquisition of the data pack or something else.
160 The particulars are capable of being amended so as to remove the difficulties and deficiencies identified by this objection.
Objection 2: “Convergent communications method”
Telstra’s Submissions
161 In its additional particulars relating to paras 1.1-1.11, Upaid refers to the “convergent communications method” as the provision of “telecommunications services together with other services such as data and multimedia to authorised users, as described in paragraphs 1.1-1.11”. Telstra argues that paras 1.1-1.11 do not describe “telecommunications services together with other services such as data and multimedia”. Rather, they speak of the acquisition of plans and the acquisition of products. Telstra submits that the acquisition of a product may involve the provision of data, but the particulars given in paras 1.1-1.11 do not describe the plans and data as being provided “together”. This, according to Telstra, is confirmed by the evidence concerning the acquisition of a MOG subscription (ie first, the customer subscribes to a Post-Paid Service Plan, which permits the customer to use the Telstra communications network; and, secondly, the customer may then purchase the MOG subscription). The purchase of the MOG subscription does not involve the provision of “telecommunications services together with other services such as data and multimedia”.
162 Telstra also argues that certain evidence given by Dr Nicholls of this feature does not contradict Telstra’s evidence. Telstra also argues that Dr Nicholls’ evidence does not support Upaid’s particularised case. Rather, Telstra says, Dr Nicholls’ evidence conflates the acquisition of a MOG subscription and the use of that subscription, and treats both as “one transaction” for the purposes of claim 1. Telstra submits that this is not Upaid’s case as particularised in paras 1.1-1.11. Telstra also criticises the suggestion in Dr Nicholls’ evidence that all that is required for a convergent communications method is the capacity to use different technology for different transactions. Telstra submits that this suggestion is contrary to Upaid’s particularised case and plainly untenable.
Upaid’s Submissions
163 Upaid submits that Telstra has practised a “convergent telecommunications method” by providing subscribers to its post-paid plans with access to both a telecommunications service and, relevantly, the music data and multimedia content of the MOG product. Upaid says that appropriate particulars are given in paras 1.2 and 1.3 of the particulars: see [111] above.
164 Upaid argues that its pleaded case, considered in the context of the acquisition of the MOG product, is that telecommunication, data and multimedia communication services are “converged” in the sense that the authorised user who has subscribed to the relevant plan is able to access each of these kinds of communication service.
165 By way of development of this argument, Upaid says that claim 1 refers to “the transaction”, but does not define the temporal or other character of that transaction. The effect of purchasing the MOG product is to obtain access to the music media service via a communications platform that already affords access to telecommunications services under the authorised user’s plan.
166 Upaid submits that the evidence shows that the MOG product can be delivered to subscribers through at least two different technologies, being a fixed web-based service or a mobile app service. Upaid submits that this demonstrates that Telstra’s systems provide for the use of different services and technologies and shows that Telstra is operating a convergent communications network.
167 Upaid submits that, essentially, Telstra’s systems bring together services such as telephony, data and multimedia and provide the user with the services desired to conduct the requested transaction.
168 Dr Nicholls gave evidence that he understood the expression “convergent communications method” as used in claim 1 of the 853 patent to mean a method for providing a variety of communication services across a range of communication systems and networks (eg fixed line or mobile access networks), using different technologies (eg 3G or 4G technology). He referred, in that connection, to the passages at [0096] and [0098] of the complete specification, which I have quoted at [29]-[30] above.
169 Dr Nicholls also gave evidence that it was not necessary in a “convergent communications method” that all converged communications be present in the one transaction or that several types of communication (e.g. telephony, data services and multimedia) involved in the one transaction be provided simultaneously. Dr Nicholls expressed the opinion that only one communication service or technology out of those available for performing the method needs to be selected for a specific transaction. He said that the availability of a multiplicity of technologies and communications is the indicator of convergence rather than the selection of multiple technologies or communications. Dr Nicholls also expressed the opinion that, in a “convergent communications method”, various types of communication services can be provided in a multi-stage process over a period of time.
170 Dr Nicholls referred to various documents provided on discovery in relation to the manner of delivery of the MOG service and said that these demonstrated that Telstra was operating a “convergent communications method”.
171 Dr Nicholls also referred to evidence given by Mr Bagga to the effect that, in the course of purchasing a subscription using a mobile telephone operating under one of Telstra’s plans, a verification SMS was sent to the mobile telephone as part of the process while using a data service. Dr Nicholls said that this was a clear example of convergent communications and of Telstra employing a “convergent communications method”.
Consideration and Conclusion
172 Claim 1 of the 853 patent is not directed to a convergent communications network or operating a convergent communications network as such, but a “convergent communications method” employing a rule set in which the method is further characterised by the steps defined by the claim. The expression “convergent communications method” is not defined in the body of the complete specification. Nevertheless, in its particulars, Upaid has characterised what it says is a “convergent communications method” having the characteristics of the method claimed in claim 1. I mention these matters because neither Upaid’s submissions nor Dr Nicholls’ evidence engage, at all times, the case that Upaid has particularised for this type of infringement.
173 Upaid’s particularised case is unquestionably one where the transaction involves the purchase of one of the identified products: see paras 1.6 and 1.8 of the particulars. Leaving aside the difficulties discussed in relation to Objection 1 to the Type 1 infringement and focussing attention on a MOG subscription as one of the exemplified “products”, Upaid’s case, as particularised, is that the transaction by which the product is purchased is a use of the claimed “convergent communications method”. Upaid’s case, as particularised, is not directed to the contention that the claimed method is used when the authorised user subsequently (ie after purchase of the subscription itself) accesses the MOG service on Telstra’s Communications Network. To the extent that Upaid’s submissions concerning “access” go beyond the act of purchase and extends to the user’s subsequent use of, say, the MOG service (as an exemplified “product”) or the manner in which the MOG service, when so accessed, is delivered to the authorised user, then Upaid has not addressed the case that it has particularised. Indeed, it has travelled well beyond that case. The same conclusions apply to Dr Nicholls’ evidence on these matters. As Telstra submits, a method does not become a “convergent communications method” merely because it is performed on a system which, at a different time, and by different steps, may be used to provide telecommunications services or music/multimedia content.
174 There is a different aspect of Upaid’s submissions, and perhaps of Dr Nicholls’ evidence, that I should address. There is a suggestion in Upaid’s submissions that “the transaction” of claim 1 encompasses not only the purchase of a product but includes, as part of the one transaction, the subsequent use of the product employing Telstra’s Communications Network. Once again, this is not the case that Upaid has particularised. Moreover, it is not clear to me at the present time—I say no more—how claim 1 would read onto such a “transaction”.
175 Paragraph (a) of the additional particulars relating to paras 1.1-1.11 refers to telecommunications services and “other services” (ie data and multimedia) being provided “as described in paragraphs 1.1-1.11”, but no such “other services” are described in those paragraphs (beyond the data packs themselves). There is, therefore, a lack of conformity between para (a) and the other particulars to which it refers.
176 As the assertion made in para (a) is the sole basis for Upaid’s allegation that Telstra has, in this type of infringement, used a “convergent communications method”, the particulars are deficient. In this connection, it is not enough for Upaid to rely merely upon the ability or capacity of a communications platform to provide a telecommunications service and data/multimedia content, as, in argument, it now seems to do. It must identify the respects in which it alleges that the purchase transactions it has particularised constitute the use by Telstra of a “convergent communications method”. As I have said, this is not achieved by the additional particulars in para (a).
Objection 3: Determining and applying steps—the “payment rule”
Telstra’s Submissions
177 Claim 1 refers to the “determining” and “applying” steps of the method as involving a “payment rule” that is “applicable … for authorizing a transaction”.
178 Upaid’s particularised case is that Telstra has determined a payment rule “by which the price to be charged to the user’s Telstra account for the transaction, together with provisions by which the user will be required to pay that amount, is determined”: para 1.7.
179 Telstra raises two issues.
180 The first is that, as particularised, the payment rule is only a rule for determining the price and the provisions by which the user is required to pay the price. So particularised, this rule says nothing about authorisation of a transaction.
181 The second issue is that, on the evidence, there is no payment rule of the kind particularised by Upaid. Telstra says that the price of a MOG subscription is determined prior to the user’s request to acquire it. The price is not determined as part of a method in response to a request to acquire the MOG subscription. Further, the provisions by which the price is to be paid relate to, and are specified as part of, the user’s particular Post-Paid Service Plan. These provisions are not determined as part of a method in response to the acquisition of a MOG subscription. Thus, Telstra submits, the particularised case is untenable.
182 Telstra submits that Dr Nicholls’ evidence acknowledges that the payment rule must be applicable for authorising a transaction. Telstra submits that Dr Nicholls’ evidence (referred to below) provides no answer to this objection. Rather, Telstra argues, Dr Nicholls’ evidence goes beyond the particularised case and is inconsistent with it.
Upaid’s Submissions
183 Upaid submits that a “payment rule” is a set of parameters that dictates the amount, mode and other elements of the payment for the transaction. When claim 1 refers to the step of “determining” a payment rule “for authorizing a transaction”, it encompasses the process of selecting which payment rule or rules should be applied from a rule set that is already in existence. These submissions are based on Dr Nicholls’ evidence.
184 Upaid further submits that the parameters of the payment rule(s) that Telstra selects and applies in the case of a Post-Paid Service Plan include:
(a) the price of a MOG subscription;
(b) the validity of a selected method of payment;
(c) the customer’s spend limit;
(d) the validity of the Telstra mobile number that is entered by the customer; and
(e) in the case of a credit card payment, a validity check on the credit card details.
185 This submission is based on Dr Nicholls’ evidence and Mr Bagga’s evidence.
186 Upaid also submits that the payment rule(s) is applied “for authorizing the transaction” because the payment will not proceed if any of the parameters of the rule(s) is invalid. Upaid gives three examples.
187 First, if the purchase is made by a credit card payment, the payment will not be authorised by Telstra if the entered payment amount or credit card details are invalid. Further, the payment will not be authorised unless and until Telstra has verified that the payment is authorised by the credit card provider.
188 Secondly, if the purchase is made using the customer’s post-paid account, Telstra’s systems check whether the transaction will exceed a monthly spend limit. If it is determined that the spend limit be exceeded, the transaction will not be authorised by Telstra.
189 Thirdly, Telstra’s systems check whether the customer has a valid mobile telephone number. If the number is valid, and the other parameters are met, the transaction will be authorised.
190 With regard to the second issue raised by Telstra, Upaid submits that “determining” should not be understood as requiring the parameters that constitute the payment rule(s) to be created after, and in response to, the request to purchase the product (here, the purchase of the MOG subscription). Upaid submits that to so construe the word “determining” would be inconsistent with the complete specification which, at pages 63 to 71 and in Figures 35 and 36, describes a process that involves the selection and application of the appropriate payment rule or rules from a range of pre-existing rules.
Consideration and Conclusion
191 Based on the description in the complete specification, it is reasonably open to argument that, when using the word “determining” in the context of “determining … [a] payment rule”, claim 1 is referring to the act of selecting a rule or rules for use in the method, as Upaid contends. There is, however, a distinction between “determining … [a] payment rule”, in this sense, and defining the content of that rule.
192 In its particulars, Upaid has defined the content of the payment rule on which it relies as a rule “by which the price to be charged to the user’s Telstra account for the transaction, together with the provisions by which the user will be required to pay that amount, is determined”: see para 1.7 of the particulars. It is not clear what “determined” means in this phrase. It seems to have a meaning consistent with deciding what the price of the product will be. As Telstra correctly points out, the price of, say, a MOG subscription is “determined”, in this sense, prior to the user’s request to acquire it, and not as part of the method by which the product is acquired.
193 None of the matters advanced by Upaid in submissions as to the content of the payment rule finds expression in the particulars, other than a reference to the price of the product to be acquired. The case that Upaid now advances in this regard travels well beyond the case it has particularised and is, as a matter of substance, a different case.
194 Further, the case that Upaid now advances as to how, in this type of infringement, the payment rule is applied “for authorizing the transaction” finds no expression in the particulars at all. The examples given by Upaid in submissions (see [187]-[189] above) have nothing to do with the payment rule it has particularised. By giving these examples, Upaid appears to accept (although it has made no express concession) that the payment rule it has particularised is not one “for authorizing … a transaction”, as required by claim 1. Thus, the particularised case is not tenable.
195 There is a further issue relevant to these examples, addressed below, as to whether a purchase by credit card is within Upaid’s particularised case with respect to this alleged type of infringement and whether, in any event, purchase by credit card can fall within claim 1.
Objection 4: Charging and settling steps—“charging” and “settling”
Telstra’s Submissions
196 Claim 1 requires a “charging” step, and a “settling” step.
197 Upaid’s particularised case is that three steps are involved: verification (para 1.8A); charging (para 1.9); and settling (para 1.11).
198 As particularised, the alleged verification step appears to take place after a request has been received from an authorised user to purchase one of the particularised products but before the charging step. However, according to para 1.8A of the particulars, the verification involves Telstra verifying with a Financial Provider that the amount owed to Telstra will be paid by the Financial Provider. Telstra points out that, at the time of the alleged verification step, there can be no “amount owed to Telstra” because charging has not occurred. Telstra also submits that, on the evidence, no verification step is involved in this type of transaction by Telstra.
199 With regard to “charging”, Upaid’s particularised case involves debiting the user’s Telstra account. Telstra submits that this excludes use of a credit or debit card to make the payment for the product because when the authorised user is using his or her credit or debit card, the authorised user is not using his or her Telstra account to make the payment, but, rather, employing alternative means for payment. Telstra points to the fact that the evidence shows that none of the accounts on the systems it uses for mobile accounts perform any relevant activity when the customer uses a credit or debit card. Telstra submits that paying for a MOG subscription using a credit or debit card does not meet the particularised case.
200 With regard to “settling”, Upaid’s particularised case is that settling takes place by recording to the user’s Telstra account that the obligation to pay Telstra will be discharged by the Financial Provider: para 1.11. Telstra submits that, as so particularised, this appears to be, in substance, the same as the alleged “verification” step in para 1.8A.
201 With further regard to “settling”, Telstra submits that, in any event, the allegations in para 1.11 of the particulars are incorrect as a matter of fact. The MOG example shows that Telstra’s systems verify whether its customer has a Telstra account which is permitted to make the transaction. If so, the relevant system posts the charge as a debit on the customer’s bill, following which the transaction proceeds. Telstra’s systems are not directed to the manner in which the bill is to be paid. The transaction proceeds regardless of, and in advance of, the particular manner of payment of the bill which the customer ultimately chooses.
202 Telstra submits that Dr Nicholls’ does not support Upaid’s particularised case in this regard.
Upaid’s Submissions
203 Upaid submits that a distinction should be drawn between the purchase of a product using the user’s post-paid Telstra account and the purchase of a product using a credit or debit card.
204 With regard to the purchase of a product using the user’s post-paid Telstra account, Upaid submits that “charging the account” according to the payment rule takes place because Telstra records the subscription fee for the product as a debit against the user’s Telstra account in one of Telstra’s systems. Upaid submits that “settling charges to the account” takes place by Telstra making a record to the effect that the charges have been settled as between Telstra and the user. In this connection, Upaid submits that, after the balance of the user’s Telstra account is debited, the user no longer has an outstanding obligation to pay Telstra for the product and the charges to the user’s Telstra account are “thereby settled”.
205 Upaid relies on Dr Nicholls’ evidence that certain discovered documents and certain processes described in his affidavit “indicate” that Telstra records in a customer’s account how the customer has chosen to pay for the relevant transaction and that the customer’s obligation to pay is satisfied as between Telstra and the customer. Dr Nicholls says that whether Telstra has received actual monetary payment for the transaction from, say, a financial institution, is a matter between Telstra and “the relevant third party”, but “settling” as between Telstra and the customer has occurred.
206 With respect to payment using a credit card, Upaid submits that “charging the account” according to the payment rule takes place because Telstra makes a record in the user’s BigPond Music account of the purchase amount and payment method for the product (here, purchase of the MOG subscription). Upaid submits that “settling charges to the account” takes place by Telstra recording that the obligation to pay Telstra will be discharged by a Financial Provider, as particularised in para 1.11 of the particulars. Upaid submits that, in order to make this record, Telstra utilises the verification information particularised in para 1.8A of the particulars. The relevant verification information is a statement from the Financial Provider that the payment is authorised. Upaid says that the verification process is undertaken by Telstra’s Billpay system. Upaid’s case is that this process of verification and recording by Telstra constitutes the “settling” of charges as between Telstra and its customer.
207 Upaid also submits that it is apparent from the evidence that “multiple other payment processing and remittance steps are undertaken by Telstra”. In this connection, Upaid relies on certain evidence given by Dr Nicholls. Upaid submits that an inference arises that Telstra’s internal billing remittance files and processes make other records of settling of the charges, as between the user and Telstra.
Consideration and Conclusion
208 It is necessary for me to address two initial matters.
209 The first is that Upaid accepts that the case it has advanced in submissions concerning the purchase of a product using the user’s post-paid Telstra account does not accord with the case it has particularised in paras 1.8A and 1.11 of the particulars, which relies upon a verification step and the step of recording that the obligation to pay Telstra will be discharged by a Financial Provider. Upaid has, therefore, abandoned its particularised case with respect to purchase using the user’s post-paid Telstra account. It is implicit in this abandonment that Upaid accepts that its particularised case in this regard is not tenable. Upaid says, however, that it continues to rely on paras 1.8A and 1.11 with respect to the purchase of products by credit card payments.
210 It now seems, therefore, that Upaid wishes to advance two separate and distinct cases represented by the distinction drawn in its submissions between purchases using the user’s post-paid Telstra account and purchases using a credit (or debit) card. That being so, I do not understand how the separate and distinct cases can represent the same type of infringement, as I discussed in Upaid No 1. Nevertheless, I will address both cases.
211 The second matter is that Upaid’s case advanced in submissions rests on certain views expressed by Dr Nicholls concerning the construction of claim 1 of the 853 patent, particularly in relation to the integer of “settling charges to the account”. Dr Nicholls advanced the view that “settling charges to the account” describes how an end user will meet the liability to pay for the provision of services, but does not require any actual transfer of funds. Dr Nicholls argued that once an end user has selected a payment method from the available alternatives offered by the service provider, the user will have discharged his or her obligation to pay for the services and the charges are “settled as between the end user and the service provider”. Dr Nicholls said that a record of this is reflected in the customer’s account. Dr Nicholls also argued that the integer of “settling charges to the account” has a “clear meaning when read in the context of [the 853 patent] as a whole”. However, Dr Nicholls did not identify any specific text or other description to support his point of view.
212 The construction of the complete specification and relevant claims is a question for the Court. Although the Court must construe the complete specification and claims as the person skilled in the art would understand them, there is nothing to suggest that the integer of “settling charges to the account” has a technical meaning or that the person skilled in the art would endow them with any special meaning beyond their ordinary signification. Dr Nicholls’ evidence on this matter stands as no more than his own proffered construction of the integer, which Upaid now seeks to use argumentatively.
213 The word “charging” when used in the integer of “charging the account” (here, the user’s account with Telstra) should be taken as possessing the meaning of “charge” in the sense of “to hold liable for payment; enter as a debit against” or “to list or record as a debt or obligation; enter as a debit”: Macquarie Dictionary (6th ed, 2013) at 255 (meanings 12 and 13). No other meaning is reasonably suggested by the complete specification. Paragraph 1.9 of the particulars recognises this meaning by stating with respect to the “charging” step that “Telstra has recorded the price for the acquisition of the selected product as a debit against the users’ Telstra accounts”.
214 Correspondingly, the word “settling” when used in the integer of “settling charges to the account” should be taken as possessing the meaning of “settle” in the sense of “to pay (a bill, account due, or the like)”: Macquarie Dictionary (6th ed, 2013) at 1339-1340 (meaning 3). Once again, no other meaning is reasonably suggested by the complete specification.
215 In its particulars, Upaid has defined the relevant account as “one or more accounts within Telstra’s system which correspond to or are associated with a Post-Paid Plan or a Pre-Paid Plan (as the case may be) to which a user has subscribed” (see [105] above). This means that, in the context of claim 1 of the 853 patent, it is one of these accounts that is “charged” and in respect of which the charges are “settled”.
216 Having addressed these initial matters, I turn to consider the two ways in which Upaid has advanced its case in submissions.
217 With regard to the purchase of a product using a user’s post-paid Telstra account, it is not in dispute that a “charge” is made to the user’s Telstra account. With regard to the “settling” step, Upaid accepts, as I have noted, that there is no “settling” as particularised. Its case advanced in submissions is that, after the balance of the user’s post-paid account is debited, the user no longer has an outstanding obligation to pay Telstra for the purchase of the product. Upaid argues that, after Telstra has debited the user’s Telstra account for the purchase of the product, the user’s Telstra account is “thereby settled”. It says that this can be seen from the user’s perspective when the user checks the “recent activity” with respect to his or her account history. Upaid says that the user’s Telstra account records the purchase of the subscription as an event that is “separate to the depletion of the user’s other available balances on that post-paid account”.
218 With respect, this submission is nonsensical. I accept Telstra’s submission that this argument conflates the distinct and separate steps of “charging” and “settling” that are required by claim 1. Upaid’s argument is also obviously wrong because the user has not paid Telstra for the product and is still required to discharge his or her indebtedness to Telstra for the purchase. Indeed, it is also Upaid’s particularised case that the user is contractually obliged to pay Telstra for the amount “charged”: para 1.9 of the particulars. Moreover, the recording with respect to “recent activity” to which Upaid refers is simply a recording of the total estimated charges before discounts and plan allowances for the purchase. It has nothing to do with “settling” the user’s Telstra account for the purchase of the product.
219 I should mention in this regard that Dr Nicholls gave evidence, by reference to one of the discovered documents, that, once a MOG subscription is charged to a customer’s account, Telstra considers that the amount charged is part of its revenue “and so the transaction between the customer and Telstra is complete”. Accepting for the sake of argument that Telstra considers the amount charged as part of its revenue, this says nothing about the “settling” step required by claim 1 of the 853 patent.
220 Thus, in respect of the first way in which Upaid now advances its case for this alleged type of infringement, there is no “settling” step as particularised. Moreover, there is no separate “settling” step as required by the claimed method. The “charging” and “settling” steps now relied on are, as a matter of substance, one and the same step. Absent separate “charging” and “settling” steps, there can be no infringement of the claimed method. Therefore, this case on infringement, as advanced in submissions, is not tenable.
221 As to the second way in which Upaid has advanced its case in submissions, I accept Telstra’s submission that payment using a credit card for a product cannot fall within Upaid’s particularised case for this type of alleged infringement. This is because Upaid’s particularised case is dependent on the user’s Telstra account being “charged” by debiting: see para 1.9 of the particulars. As I have noted, the identification of “charging” by debiting the user’s Telstra account presents no problem for this alleged type of infringement. But a problem does arise when the purchase is made by credit card because, in that circumstance, the evidence establishes that there is no debit to the user’s Telstra account. The process of making a credit (or debit) card payment for, say, a MOG subscription does not involve a Telstra customer account, and does not involve Telstra’s account billing systems.
222 Whilst accepting that the user’s post-paid account is not “charged”, Upaid seeks to avoid this problem by arguing that the user’s BigPond Music account is “charged”. However, although styled an “account”, a user’s BigPond Music account is nothing more than a profile of the use of the BigPond Music service. As I have recorded, this profile is not a billing account. It is not charged or billed and payments are not made to it. It contains no account “balance”.
223 Upaid’s case is simply that, because the user’s BigPond Music account records the payment of, say, a MOG subscription, Telstra has “charged” a Telstra account that is maintained by the user. This is not “charging the account” as required by claim 1 of the 853 patent. Moreover, there can be no “settling charges to the account”, as also required by the claim.
224 Thus, in respect of the second way in which Upaid advances its case for this alleged type of infringement, there is no “charging” step as particularised and no “charging” step as required by the claimed method.
225 It follows also that there cannot be a “settling” step as required by the claimed method because the “settling” step is “settling charges to the account” (emphasis added). If there has been no “charging the account”, then there can be no “settling charges to the account”.
226 Therefore, this second case on infringement as advanced in submissions is not tenable.
Objection 5: Charging and settling steps—utilising a “separate” financial network
Telstra’s Submissions
227 Claim 1 requires that the “charging” and “settling” steps of the method to be performed using a financial network that is separate from the communication network referred to in earlier parts of the claim.
228 As particularised, Upaid’s case is that the separate financial network is the Financial Provider’s network. Upaid’s case is that “charging” and “settling” is carried out “utilising the verification information exchanged via the financial network of the Financial Provider as described in paragraph 1.8A”: paras 1.9 and 1.11.
229 Telstra makes the following submissions.
230 First, as particularised, neither the “charging” step nor the “settling” step uses a financial network. Rather, as particularised, the “charging” step and the “settling” step utilise verification information obtained from the alleged separate “verification” step. The particulars do not suggest that once the alleged verification has taken place, there is subsequent utilisation of the financial network as part of the discrete and subsequent “charging” and “settling” steps.
231 Secondly, the allegation that the verification information is used in the “charging” step and “settling” step is “opaque”. As I have previously noted, Telstra submits that there does not appear to be any difference in substance between the alleged “verification” step and the “settling” step.
232 Thirdly, and in any event, Telstra submits that the evidence shows that Telstra’s relevant systems do not:
verify that any amount owed to Telstra will be paid by a financial institution;
utilise any information obtained from such verification;
interrogate or communicate with the network of a financial institution; or
record to a customer’s account that an amount owed to Telstra will be discharged by a financial institution.
Upaid’s Submissions
233 Upaid, once again, distinguishes between the purchase of a product using the user’s post-paid Telstra account and the purchase of a product using a credit card.
234 With regard to purchase of a product using a user’s post-paid Telstra account, Upaid accepts that the “charging” and “settling” steps do not occur via a financial network of a Financial Provider, as it has particularised. It now advances a different case. It argues that Telstra’s own networks also, at times, function as financial networks. This submission is based on Dr Nicholls’ evidence.
235 In this connection, Dr Nicholls said that the expression “financial network” is not a technical one. He argued that a financial network is characterised as one over which financial information is obtained and financial transactions are conducted. According to Dr Nicholls, a communications network can temporarily become a financial network when it is being used to conduct a financial transaction or provide financial information.
236 Relying on this evidence, Upaid submits that there is no requirement in claim 1 of the 853 patent that a “financial network” cannot be an internal network within a carrier. It submits that a “financial network, separate from the … communication network”, as required by claim 1, will be satisfied where there is a financial network that is additional to the communication network, which is used for “charging” and “settling”. XXXXX XXXXXX XXXX XXX XXXXXXXXXX XXXX XXX XXXXXXXXXXX XXXXXXX XXXXX XXXXXXX XXX XXXXXXXXX XXXXXXX XXXXXXX XXXXXXXXXX XXX XXXXXXX XX XXXXXXXX XXXXXXXXX XXXXXXX XX XXXXXXX XXXX XX XXXXXXXX XXXX XXXXXXXXX XXXXXXXXXXXXXX XXXXXXX XXXX XXXXX XXXXXXX XXXXXXXX X XXXXXXX XXXX X XXXX XXX X XXXXXXXXXXXXX
237 With regard to payment of a product using a credit card, Upaid refers to Telstra’s Billpay system which, it says, uses information obtained from the Financial Provider, via a financial network, to verify that payment is authorised. Upaid argues that, for this type of transaction, a “charging” step is performed using a financial network because a transaction to purchase, say, a MOG subscription using a credit card will not be approved by Telstra unless and until a “positive response” for the transaction is received from the Financial Provider as the issuer of the credit card.
238 XXXXX XXXXXX XXXX X XXXXXXXXXX XXXX XX XXXXXXXXX XX XXXXXXX XXXXXX X XXXXXX XX XXXXXXXXXXX XXXXXXXX XXXX X XXXXXXXX XXXXXXXX XX XXXXXXXX XXXXXXX XXXXX XXXX XXXXXX XXXXXX XXXXXXXXX XXX XX XXXX XXXXXXX XXXXXXXXXXX XXXXXXXXX XX XXX XXXXXXXXXXXX XXXXXXXXX XXX XXXXX XXXX XXX XXXXXX XX XX XXXXXXXXX XXX X XXXXXXXX XXXX XXXXXXXX XXXX XXX XXXXXXX XXXXXXXX XXXXXXXXXXX XXX X XXXXXXXX XXXXXXXXXXX XXXXXX XXXX XXXXX XX XX XXXXXX XXXXXXX XXX XXXX XXXXXXXX XX XXXXXXXX XX XXX XXXXXXXXX XXXXXXXXXXXX
Consideration and Conclusion
239 Once again, in its submissions Upaid advances two separate and distinct cases in respect of this alleged type of infringement. As I have observed, I do not understand how these cases can represent the same type of infringement. I will, nevertheless, address both cases.
240 The case with respect to purchase of a product using the user’s post-paid Telstra account has not been particularised. It relies, substantially, on Dr Nicholls’ proffered construction of the expression “financial network” and his argument that Telstra’s own networks, at times, also function as financial networks. This case is substantially different from Upaid’s particularised case, which is that the only financial network in play is the Financial Provider’s financial network which is separate from Telstra’s Communications Network. Upaid’s particularised case is not tenable as an infringement of claim 1 because Upaid accepts that no financial network of a Financial Provider is involved when the product is purchased using the user’s post-paid Telstra account.
241 The limits of Dr Nicholls’ evidence should be appreciated. His evidence was that a communications network can “temporarily” become a financial network when the communications network is being used to conduct financial transactions or provide financial information. In giving this evidence, Dr Nicholls plainly had in mind Telstra’s Communications Network, or at least part of it, temporarily functioning as a financial network.
242 It is an essential feature of claim 1 that there be separate networks—a “financial network, separate from the … communication network”. Claim 1 does not appear to envisage the one network functioning in dual capacities. I accept, however, that there may be a question about what claim 1 means by “a financial network” or by a “financial network, separate from … the communication network”. Therefore, I am not persuaded that it is not open to argument that part of Telstra’s network can or does function as a financial network that is separate from Telstra’s Communications Network for the purposes of the claimed method. Nevertheless, the significant problem remains that this is not the case that Upaid has particularised. Upaid accepts that its particularised case is not tenable because the “charging” and “settling” steps do not occur via a financial network of a Financial Provider.
243 The second way in which Upaid now advances its case in submissions is answered by the fact that it does not meet Upaid’s particularised case for the “charging” step and cannot, in any event, meet the requirements of the claimed method. As I have found (see [221] above), if there is no “charging” step (ie there is no “charging the account” because the price for the product is paid for by a credit or debit card), there can be no subsequent step of “settling charges to the account” (once again, because there have been no charges to the user’s Telstra account). The question of the use of a separate financial network to perform the “settling” step simply does not arise.
Objection 6: Settling step—“plurality of transaction providers”
Telstra’s Submissions
244 Claim 1 requires the step of “settling” charges to the user’s Telstra account by “one of a plurality of transaction providers” using a separate financial network.
245 Upaid’s particularised case is that a Financial Provider is a transaction provider in all transactions: para 1.4.
246 Telstra submits that the evidence shows that there is no Financial Provider where the user’s Telstra account is “charged” to a post-paid mobile account. Telstra also submits that a transaction in which payment is made by a credit card does not fall within Upaid’s particularised case.
Upaid’s Submissions
247 Upaid submits that, in the case of the purchase of a MOG subscription, both Telstra and the third party supplier, MOG Inc., are transaction providers. This is particularised in para 1.4 of the particulars. Thus, the requirement of a “plurality of transaction providers” is satisfied by this circumstance alone. Upaid also submits that a Financial Provider is also a transaction provider when the purchase of a relevant product or service is by credit card. This is also particularised in para 1.4.
Consideration and Conclusion
248 With regard to the purchase of product using the user’s post-paid account, I accept Telstra’s submission that no Financial Provider is involved: see [246] above. Indeed, it does not appear that Upaid contests that proposition. On Upaid’s particularised case, that leaves Telstra and the third party supplier as the only possible transaction providers. However, neither Telstra nor the third party supplier performs any step of “settling charges to the account”. As I have found (see [220] above), Upaid’s case advanced in submissions does not involve a “settling” step that is distinct from the “charging” step. As there is no “settling” step, it follows that there is no “settling” step performed by “one of a plurality of transaction providers”, as required by the claim.
249 With regard to the purchase of a product using a credit card, I accept, once again (see [221] and [243] above), that this kind of transaction does not fall within Upaid’s particularised case because there is no “charging” of the user’s Telstra account. If there is no relevant “charging” of the user’s Telstra account, there can be no step of “settling charges to the account” performed by a Financial Provider acting as a transaction provider. Upaid does not suggest that, in this kind of transaction, there is any other relevant transaction provider who could perform the “settling” step.
250 It follows that this feature of claim 1 of the 853 patent is not present in this alleged type of infringement, with the consequence that it is not a tenable infringement.
Pre-Paid Service Plans (Digital Purchase): the Type 2 infringement
251 Objections 1, 2 and 3 are also raised with respect to this alleged type of infringement. Subject to the matter next noted, and leaving aside matters of mere detail, the findings I have made at [158]-[160] (Objection 1), [172]-[176] (Objection 2) and [191]-[195] (Objection 3) equally apply.
252 In this alleged type of infringement, Upaid submits that the content of the payment rule is different. Instead of a spend limit applying (as in the Type 1 infringement), Upaid says that, in this alleged type of infringement, the payment rule includes a requirement that there be sufficient balance in the account to meet the charge for the product. So, for example, in the case of the purchase of a MOG subscription, the user must have a balance of more than $11.99 in his or her Telstra account to meet the subscription charge. Upaid says that the account balance parameter is part of the payment rule “applicable at that time for authorizing a transaction” because Telstra’s systems check whether the parameter is satisfied. If there is an insufficient balance in the account for the transaction, an error message is generated and Telstra does not authorise the transaction.
253 The only additional comment that I should make is that Upaid has not particularised this payment rule.
Objection 4: Charging and settling steps—“charging” and “settling”
Telstra’s Submissions
254 The evidence shows that, for pre-paid services, a customer makes a payment to his or her Telstra account prior to acquiring the product. When the user acquires a product using the service, the user’s account with Telstra is debited. The transaction is then complete. Telstra submits that, on this basis, it is difficult to conceive of any subsequent step, let alone a “settling” step, in relation to the transaction in question. Nevertheless, Upaid’s particularised case is that there is a “settling” step, which is expressed in the same terms as the “settling” step in Post-Paid Service Plans. In other words, according to Upaid, there is a recording to the user’s Telstra account that the obligation to pay Telstra will be discharged by a Financial Provider: para 1.22.
255 Telstra submits that this allegation is impossible to comprehend. The debit having been made to the pre-paid account, there is no obligation to pay Telstra. Telstra submits that the allegation that there is a “settling” step by which Telstra records that the user’s obligation to pay Telstra will be discharged by the Financial Provider, is nonsense. Moreover, Telstra submits that the evidence shows that its systems do not make any such recording as particularised.
Upaid’s Submissions
256 As with the Type 1 infringement, Upaid distinguishes between the purchase of a product using the Telstra mobile account (here, under a pre-paid service plan) and the purchase of a product using a credit card.
257 With regard to the former, Upaid submits that “charging the [user’s Telstra] account” according to the payment rule takes place because Telstra debits the user’s Telstra account upon the acquisition of the relevant product. Upaid submits that “settling charges to the account” takes place because, after the debit is made, the user no longer has an outstanding obligation to pay Telstra for the purchase of that product and “the charges to the user’s account are thereby settled”. Upaid submits that the fact that the obligation has been satisfied is recorded in the user’s Telstra account.
258 In this connection, Upaid points to the fact that when the product is purchased, the service summary for the pre-paid plan shows the new credit balance, and the user’s usage history, separately accessed, shows the purchase price that has been debited to the pre-paid account. Upaid argues that this shows that “the balance of the account is depleted as a result of the charging” and that “the depletion is attributed to the fact that the charge for [the product] has been settled to the user’s account”. Upaid also points to the fact that Telstra treats the amount of the transaction as part of its revenue and records the transaction on its general ledger.
259 Upaid accepts that the case it now advances in submissions with respect to the “settling” step is not the case it has particularised.
260 With regard to purchase using a credit card, Upaid relies on the submissions it makes with respect to Objection 4 to the Type 1 infringement.
Consideration and Conclusion
261 This alleged type of infringement is not tenable.
262 First, with regard to the purchase of a product using the user’s pre-paid Telstra account, Upaid has abandoned the case it has particularised concerning the “settling” step. It is implicit in this abandonment that Upaid accepts that its particularised case in this regard is not tenable. The different case it has advanced in submissions cannot be maintained because that case simply does not distinguish between the “charging” step and the “settling” step. Indeed, as a matter of substance, this alleged type of infringement treats the separate and discrete “charging” and “settling” steps as one and the same. In para 1.20 of the particulars, Telstra has particularised the “charging” step as debiting the user’s Telstra account and/or decrementing the account. This application of the payment rule is reflected in Upaid’s submission that, by making the debit to the user’s Telstra account (the “charging” step), the charge to the user’s Telstra account has “thereby” been settled. There is no “settling” step that is distinct and separate from the “charging” step. Absent separate “charging” and “settling” steps, there can be no infringement of the claimed method. Therefore, this case on infringement, as advanced in submissions, is not tenable.
263 Upaid’s argument is not assisted by its reliance on the user’s service summary and usage history which, together, show a charge and balance on the pre-paid account. This does not manifest “charging” the account according to a payment rule and “settling charges to the account” by a separate settlement rule. Indeed, Upaid’s argument is circular: the balance of the account is depleted as a result of the charging and the depletion is attributed to the fact of charging. Once again, this is nothing more than an application of the “charging” step as particularised.
264 Secondly, with regard to purchase using a credit card, there is no debiting of the user’s Telstra account or decrementing of that account by the amount of the price charged for the transaction. In other words, there is no “charging” step. It follows that there is no “settling” step (“settling charges to the account”) because, once again, there have been no charges to the user’s Telstra account.
265 The parties appear to accept that the issues raised by these objections for this alleged type of infringement are the same as those discussed in relation to Objections 5 and 6 to the Type 1 infringement. Accordingly, the findings I have made at [239]-[243] (Objection 5) and [248]-[250] (Objection 6) above equally apply.
Post-Paid Bill Payment: the Type 3 infringement
Introduction
266 This (third) alleged type infringement of claim 1 does not involve a request for the provision of a product such as a MOG subscription or the debiting of an authorised user’s Telstra account for the purchase of such a product. Rather, the relevant transaction is the payment of a bill issued by Telstra to its customer operating a post-paid account. Telstra’s overall objection is that claim 1 cannot be read onto the Post-Paid Bill Payment process.
Objection 2: “Convergent communications method”
Telstra’s Submissions
267 In its additional particulars relating to paras 1.23-1.30, Upaid says that “[b]y providing telecommunications services together with other services such as data and multimedia to authorised users, as described in paragraphs 1.23 to 1.30, Telstra is using a convergent communications method”.
268 Telstra argues that paras 1.23-1.30 of the particulars do not describe the provision of telecommunications services, data or multimedia, let alone the provision of those services “together”. All that paras 1.23-1.30 describe is the process of paying a bill using a telecommunications network. Dr Nicholls described bill payment as the use of a data service to communicate with the relevant Telstra systems. Telstra submits that this shows that bill payment does not involve the use of a convergent communications method.
Upaid’s Submissions
269 Upaid submits that, in a bill payment transaction, the relevant communication services, technologies and networks that converge include the use of the Internet, accessed on a mobile phone via Telstra’s Communications Network, to communicate with Telstra’s billing systems. This is enabled by Telstra’s Communications Network employing a variety of convergent communication technologies. Upaid submits that this is sufficient to bring Telstra’s conduct within the “broad concept” conveyed by the expression “convergent communications method” as used in claim 1 of the 853 patent.
Consideration and Conclusion
270 The case that Upaid now advances in submissions is not the case it has particularised, although the particulars may be capable of amendment to remove the objection. I would only add that it is not enough for Upaid to allege no more than that Telstra’s Communications Network employs a variety of convergent communication technologies. The question is whether the process of bill payment is a convergent communications method as understood by claim 1.
Objection 3: Determining and applying steps—the “payment rule”
Telstra’s Submissions
271 Telstra submits that Upaid’s particulars do not describe a payment rule “applicable at that time for authorizing a transaction”, as required by claim 1. The particulars describe the transaction as making a bill payment. The payment may proceed regardless of the amount paid by the user or the timing of that payment. The particulars do not suggest otherwise and the evidence confirms this to be the fact.
272 Telstra also submits that the evidence shows that, as a matter of fact, there is no payment rule of the kind particularised. The amount of the bill is, obviously, determined prior to the making of the payment. The user, not a “payment rule”, determines the amount he or she wishes to pay at the time. The time within which the bill is to be paid forms part of the terms and conditions of the plan under which the user is operating. The terms and conditions are determined prior to the user engaging in the process of bill payment. Telstra submits that, accordingly, its systems do not respond to the request for making a payment by determining the amount payable or the time at which the authorised user is required to pay the bill.
Upaid’s Submissions
273 Upaid says that the payment rule, as particularised, is one by which the value adjustment of the user’s Telstra account for the transaction, together with the time at which the authorised user will be required to pay that amount, is determined: para 1.25 of the particulars. Upaid says that, where the payment for a bill is made by credit (or debit) card, a further parameter is included, namely whether the user’s credit card is valid.
274 Upaid submits that the payment rule is “applicable … for authorizing a transaction” because the transaction (bill payment) will not be allowed to proceed unless the credit card details entered by the user are valid.
275 Further, Upaid submits that the payment rule is determined “in response to an instruction received via at least one communications network” because it is determined by Telstra in response to an instruction received from a user via a communications network to pay the user’s bill using a credit card.
276 The evidence shows that if the payment is made late, a late fee may be applied. Upaid submits that payment of a late fee is an illustration of a payment rule or rules, including the parameter of the due date, being “determined” and applied by Telstra to the user’s request to pay the bill.
277 As with the Type 1 infringement, Upaid submits that “determining” a payment rule has the meaning of selecting the payment rule that should be applied.
Consideration and Conclusion
278 As I have found in relation to similar submissions made with respect to the Type 1 infringement, it is reasonably open to argument that, when using the word “determining” in the context of “determining … a payment rule”, claim 1 is referring to the act of selecting a rule or rules for use in the method, as Upaid contends. There is, however, a distinction between “determining … a payment rule”, in this sense, and defining the content of that rule.
279 With regard to the content of the payment rule, Upaid’s particularised case does not include any parameter for credit card payments that concerns the validity of the credit card details entered by the user when paying a bill. Thus, the case now advanced by Upaid in submissions travels beyond the case it has particularised. This is important because, without the additional parameter, the payment rule (ie the particularised payment rule) is not one “applicable … for authorizing a transaction”. I accept Telstra’s submission that, on the evidence, the bill payment transaction may proceed regardless of the amount of the payment or the time of the payment. This is confirmed by the fact that a late payment may attract additional fees. In other words, under the particularised payment rule, the transaction proceeds even if the due date requirement of the rule is not met. There is no consequence so far as authorisation is concerned. The only consequence is that, if the due date requirement is not met, an additional fee may be incurred.
280 Thus, this alleged type of infringement, as particularised, does not meet the requirement of claim 1 that the payment rule be one “applicable … for authorizing a transaction”. However, the particulars are capable of amendment to remove the objection.
Objection 4: Charging and settling steps—“charging” and “settling”
Telstra’s Submissions
281 Once again, Upaid’s particularised case involves three steps: verification (para 1.26A); charging (para 1.28); and settling (para 1.30).
282 With regard to the alleged verification step, Telstra relies on the matters discussed at [198] above. Telstra also submits that, as a matter of fact, there is no verification step involved in making Post-Paid Bill Payments.
283 With regard to “charging”, the act of bill payment involves crediting the user’s Telstra account as opposed to debiting the account. In this respect, this alleged type of infringement is distinguishable from the Type 1 infringement and the Type 2 infringement. Telstra submits that it is untenable to allege that bill payment involves the “charging” the user’s Telstra account. Telstra also submits in this regard that, payment having been effected, it is difficult to conceive of a further step in the transaction, let alone a “settling” step.
284 With regard to “settling”, Upaid’s particularised case is that the settlement rule involves recording a credit to the user’s Telstra account and that the amount owed to Telstra will be paid by the Financial Provider: para 1.29. Telstra submits that this is no different from the pleaded “charging” step.
Upaid’s Submissions
285 Upaid submits that “charging the account” is brought about by Telstra crediting to the account the amount that is paid in the bill payment transaction. By way of example, Upaid says that if the outstanding balance on the user’s Telstra account is $80.00 and that amount is paid, then the account balance will have been “charged” by Telstra “crediting it to a zero balance”.
286 Upaid calls in aid Dr Nicholls’ evidence. It submits that each of reducing (debiting) the value of a user’s Telstra account and adding to (crediting) the value are, according to Dr Nicholls, “common approaches to charging”. Upaid submits that this is supported by one of Telstra’s discovered documents: see Exhibit 1, p 248 of 271. Upaid also submits that “recharging” (ie “topping up” an account) is a species of “charging”.
287 With regard to the “settling” step, Upaid submits that Telstra settles charges by completing a series of reconciliation and remittance processes that result in Telstra making a record that the customer’s obligation to pay is satisfied as between Telstra and the customer. In the case of a bill payment by credit (or debit) card, Telstra’s Billpay system is used. The information recorded by Telstra in this system includes what Upaid has described as the “positive response code” of the Financial Provider, which indicates that payment is authorised and hence, according to Upaid, that payment will be made by the Financial Provider to Telstra.
Consideration and Conclusion
288 In a number of respects, Upaid’s reliance on Dr Nicholls’ evidence seems to be misplaced. One passage in Dr Nicholls’ affidavit on which Upaid relies is directed to the complete specification of the 646 patent. The complete specification of this patent is not incorporated in the complete specification of the 853 patent and obviously cannot be used as an aid to construction of claim 1 of the 853 patent. In any event, the passage from the complete specification of the 646 patent does not support Upaid’s submission. The relevant passage states (at page 6J lines 6-8):
Charging for providing the enhanced communication service includes decrementing a charge from a pre-paid user account or adding a charge to a credit account.
289 Plainly, this part of the complete specification of the 646 patent is not referring to crediting an amount to an account. The “credit account” referred to in the quoted passage is a post-paid account, such as involved in this alleged type of infringement. It cannot be said sensibly that “adding a charge to a credit account” is the same as crediting an amount to a credit account. “Adding a charge” to a credit account is “debiting” the account.
290 The other passage in Dr Nicholls’ affidavit on which Upaid relies is directed to claim 1 of the 853 patent. In that passage, Dr Nicholls notes that “charging the account” is not defined in the complete specification. Nevertheless, he argues:
“Charging” involves adjusting the value of funds associated with a user’s account. This includes reducing (decrementing) the value of an account or adding to (incrementing) an account. The incrementing or decrementing of an account may be based on the price for a product or service. Depending on whether a pre-paid or post-paid account is being charged, the account is either increased or decreased. Charging could be either positive or negative, and might involve recharging or increasing an account balance through making a payment, as well as decreasing an account balance.
291 This passage requires close attention. It involves a number of different concepts.
292 First, when saying that the account is either increased or decreased depending on whether a pre-paid or post-paid account is being “charged”, Dr Nicholls appears to be importing part of the discussion made earlier in his affidavit concerning the 646 patent. It is to be emphasised that, in the complete specification of the 646 patent, “charging” comprehends, relevantly, “adding a charge to a credit account”. When understood in this way, Dr Nicholls’ evidence does not support Upaid’s submission.
293 Secondly, when saying that charging could be “positive”, Dr Nicholls appears to be referring to recharging or “topping up” an account in respect of a pre-paid account, not paying a bill issued in respect of a post-paid account. Once again, when understood in this way, this part of Dr Nicholls’ affidavit does not support Upaid’s submission.
294 There is, however, another passage in Dr Nicholls’ affidavit which appears to support Upaid’s submission. Dr Nicholls says that when bill payments or recharges are made by credit card, the amount of the payment is recorded as a payment received in Telstra’s billing systems. Dr Nicholls says that this is “charging” the account.
295 I do not accept that, in the context of claim 1 of the 853 patent, the step of “charging” the account in respect of an authorised transaction refers to crediting the account. The word “charging” has the meaning which I have discussed above: see [213]. As I have explained, Dr Nicholls’ evidence on the construction of claim 1 does not stand in some special position. His evidence, in this regard, is his own proffered construction of integers of the claim. I reject the construction that Upaid advances based on this evidence.
296 Further, this construction is not advanced by the argument that “recharging” is a species of “charging”. “Recharging” is not a species of “charging”. Paragraph [0019] of the complete specification of the 853 patent uses the word “recharging” in the context of pre-paid accounts, not paying bills issued on a post-paid account. It is clear beyond reasonable argument that the word “recharging” is used in the complete specification to refer to “topping up” a pre-paid account. However, it is also clear beyond reasonable argument that when the complete specification is talking about “charges” and “charging”, it is referring to the cost of a transaction which is to the user’s Telstra account.
297 Further, I am not persuaded that the discovered document (Exhibit 1) on which Upaid relies materially advances its case in this regard. Upaid relies upon a definition of “charge” given in the document. The document defines “charge” as an amount that is debited or credited to “one of the customer’s balances”. However, it is apparent that this definition has been employed for the specific purposes of the document, which defines the overall architecture of a particular software solution to be implemented by Telstra. The document has no wider application than the immediate purpose for its creation. The integers of the method claimed in claim 1 of the 853 patent cannot be construed by an isolated reference in a document that is unconnected with the patent and which represents a chosen definition for a specific task.
298 In any event, the document qualifies the word “charge” as an “attributed” charge. In other words, the actions described by the definition are to be taken as a “charge” for the purposes of the document.
299 Further, the examples given in the document of the “charge” are, on their face, debits to an account, not credits.
300 With regard to “settling”, I accept Telstra’s submission that Upaid’s case conflates the “charging” and “settling” steps.
301 Claim 1 of the 853 patent refers to “charging the account” and “settling charges” as discrete steps using discrete rules. “Charging the account” is a step anterior to the step of “settling charges”. The relevant account must be “charged” before it can be “settled”.
302 Upaid’s case on “charging” is that Telstra credits the user’s Telstra account with the amount paid by the user. This involves using the verification information that the amount owed to Telstra for the bill will be paid by the Financial Provider: see para 1.28 read with para 1.26A of the particulars. Upaid’s case on “settling” is that Telstra has recorded the amount of the user’s payment as a credit and that the amount owed to Telstra will be paid by the Financial Provider: see para 1.30 read with para 1.29 of the particulars.
303 Despite Upaid’s argument to the contrary, its alleged “settling” step is no more than part of the process by which the user’s Telstra account is said to be “charged”. Each step, as particularised, involves recording the alleged “credit” and that payment will be made by the Financial Provider. “Charging” and “settling” are indistinguishable. According to Upaid, the alleged “charge” (credit to the account) will not be made unless the Financial Provider signifies that it will pay the amount owed to Telstra, and the charge is “settled” by recording the credit to the account (ie by “charging” the account) when a valid method of payment has been used. There is an obvious circularity involved in advancing this case as an infringement of claim 1.
304 Thus, Upaid’s case does not involve a “charging” step (because the user’s Telstra account is credited) and it does not involve a “settling” step that is, in any event, separate to and distinct from the alleged “charging” step. Moreover, there cannot be any step of “settling charges to the account” if, as I have found, there has been no step of “charging the account”. Therefore, the particularised case is untenable.
305 For completeness, I note that Upaid relies upon the recording of information in Telstra’s Billpay system. But the recording of information is not “charging the [user’s Telstra] account” or “settling charges to [that] account”. It is no more than the recording of information, the content of which varies as to whether the payment was successful or unsuccessful. The user’s Telstra account does not exist in the Billpay system. Thus, this part of Upaid’s case is not tenable as a matter of fact.
Objection 5: Charging and settling steps—utilising a “separate” financial network
Telstra’s Submissions
306 Upaid’s particularised case in relation to this alleged type of infringement relies on the use of verification information obtained from the alleged verification step and hence the use, in respect of that step, of a financial network of a Financial Provider. Telstra submits that Upaid’s case in this regard is untenable, substantially for the reasons given with respect to Objection 5 to the Type 1 infringement: see [227]-[232] above.
Upaid’s Submissions
307 Upaid submits that the user’s Telstra account will not be “charged” (credited) unless the bill payment transaction is approved by the Financial Provider. It says that this approval is given to Telstra via a financial network that is separate from Telstra’s Communications Network. Upaid also submits that, in settling charges to the user’s Telstra account, Telstra makes a record in its Billpay system which includes the “positive response” code from the Financial Provider. This is verification information obtained by Telstra from the Financial Provider using a financial network.
Consideration and Conclusion
308 I accept that it is open to argument that information provided to Telstra by a Financial Provider that the Financial Provider will approve payment, is information that is provided to Telstra using a financial network that is separate from Telstra’s Communications Network. However, claim 1 of the 853 patent requires that the steps of “charging the account” and “settling charges to the account” must be performed utilising a financial network that is separate from the communication network referred to earlier in the claim. On Upaid’s particularised case, this alleged type of infringement involves Telstra “charging” the user’s Telstra account and Telstra “settling” the charges to that account. Therefore, in order to satisfy the requirements of the claim, the “charging” and “settling” must be done by Telstra using a financial network separate from the communication network by which it receives the authorised user’s instruction to pay his or her bill. In other words, on Upaid’s case, this must be a network that is separate from Telstra’s Communications Network.
309 Thus, it does not seem to me that Upaid’s submissions in respect of this objection engage the “charging” and “settling” steps it has particularised for this alleged type of infringement. As Telstra submitted with respect to Objection 5 to the Type 1 infringement, once the alleged verification has taken place, there is no subsequent utilisation of the Financial Provider’s financial network as part of the discrete and subsequent “charging” and “settling” steps.
310 It follows that Upaid must rely on an internal network of Telstra that is separate from Telstra’s Communications Network. As I have found above (see [242]), I am not persuaded on the evidence that it is not open to argument that part of Telstra’s network can function as a financial network that is separate from Telstra’s Communications Network. However, Upaid’s particularised case is one based on utilisation of a financial network of a Financial Provider. That case is not tenable because, for this alleged type of infringement, the steps of “charging” and “settling” are not performed using a financial network of the Financial Provider.
Objection 6: Settling step—“plurality of transaction providers”
Telstra’s Submissions
311 As with the Type 1 infringement and the Type 2 infringement, Upaid’s particularised case is that Telstra and a Financial Provider are involved in the transaction. Telstra submits that neither Telstra nor the Financial Provider can be a transaction provider because claim 1 requires “one of a plurality of transaction providers” to have “charg[ed]” the relevant account. Consistently with its submissions in respect of Objection 4 to the Type 3 infringement, Telstra submits that, for payment of a bill, there is no “charging” of an account, or indeed any “settling” of any such charging, because the user’s Telstra account is credited and there is no subsequent “settling”.
Upaid’s Submissions
312 Subject to one qualification, Upaid submits that charges to a customer’s account are “settl[ed]” by “one of a plurality of transaction providers” on the same basis as it has articulated for the Type 1 infringement: see [247] above. The qualification is that third party transaction providers, such as MOG Inc., are “no longer in the picture”. Thus, the relevant “plurality” comprises Telstra and one or more Financial Providers, such as the issuer of a customer’s credit card.
Consideration and Conclusion
313 This objection is determined by my finding in relation to Objection 4 to the Type 3 infringement that, in this alleged type of infringement, there is no “charging” step (because the authorised transaction is one in which the user’s Telstra account is credited) and hence no “settling” step as required by claim 1.
Pre-Paid Service Plans (Recharge): the Type 4 infringement
Introduction
314 This (fourth) alleged type of infringement is the recharging or “topping up” of a pre-paid account using Telstra’s Communications Network. As with the Type 3 infringement, it does not involve a request for the provision of a product such as a MOG subscription or the debiting of an authorised user’s Telstra account for the purchase of such a product. The relevant transaction is the purchase of pre-paid credit. Telstra’s overall objection is that claim 1 cannot be read onto the Pre-Paid Service Plans (Recharge) process.
Objection 2: “Convergent communications method”
315 The parties accept that the issues raised by this objection for this alleged type of infringement are the same as those discussed in relation to Objection 2 to the Type 3 infringement. Accordingly, the findings I have made at [270] above equally apply.
Objection 3: Determining and applying steps—the “payment rule”
Telstra’s Submissions
316 Telstra submits that, for this type of infringement, the payment rule is defined in the same way as for the Type 3 infringement. Telstra submits that it is not a rule “applicable … for authorizing a transaction”, as required by claim 1. Telstra also submits that the evidence shows that, as a matter of fact, there is no payment rule of the kind particularised. Telstra’s submissions on this objection are similar to its submissions in relation to Objection 3 to the Type 3 infringement: see [271]-[272] above.
Upaid’s Submissions
317 Upaid submits that, as with the Type 3 infringement, the payment rule includes, as a parameter, the need to check whether the credit card number entered by the customer is valid. It says that this is one of the terms on which a value adjustment will be made: see para 1.33 of the particulars.
318 The evidence shows that, when a customer is recharging a pre-paid mobile account using Telstra’s website, the customer can only choose from a range of different pre-set amounts that will vary depending on the terms of the customer’s pre-paid plan. Upaid submits that these amounts must be paid by one of the methods of payment accepted by Telstra. Upaid submits that, based on the selection made by the customer, Telstra’s systems respond by determining (selecting) the appropriate payment rule that is applicable to the recharge transaction the customer wishes to conduct. The account is subsequently “charged” according to that rule by incrementing the user’s Telstra account.
Consideration and Conclusion
319 I do not see this objection as one that is determined by my findings and conclusion in relation to Objection 3 to the Type 3 infringement. The payment rule, as particularised for this alleged type of infringement, is different to the payment rule particularised for the Type 3 infringement. For this alleged type of infringement, the payment rule is particularised as a rule “by which the value adjustment of the user’s Telstra account for the transaction, and the terms by which the value adjustment will be made, is determined” (emphasis added).
320 Although the first matter referred to in Upaid’s submissions (whether a valid credit card number has been entered) is not specifically referred to in the particulars, it is reasonably open to argument that this parameter falls within the description of “the terms by which the value adjustment will be made”. Upaid also appears to rely on the second matter referred to in its submissions (selection of a pre-set amount) as a parameter of the payment rule. Once again, although this matter is not specifically referred to in the particulars, it is reasonably open to argument that it is also a term “by which the value adjustment will be made”.
321 I accept that it is reasonably open to argument that each parameter is a rule or an element of a rule that has been determined “for authorizing a transaction” within the meaning of claim 1. In this connection, I repeat my earlier finding that it is reasonably open to argument that, when using the word “determining” in the context of “determining … [a] payment rule”, claim 1 is referring to the act of selecting a rule or rules for use in the method. I accept that it is reasonably open to argument that the fact that a valid credit card number must be entered for the transaction, and the fact that the customer must select a pre-set amount for the transaction, means that Telstra has “determined” a payment rule or rules for “for authorizing a transaction”.
322 Telstra criticised certain aspects of Upaid’s submissions as involving circular reasoning. That criticism may be valid. But those aspects of Upaid’s submissions are not central to, and do not alter, the conclusion to which I have come.
323 The parties accept that the issues raised by these objections for this alleged type of infringement are the same as those discussed in relation to Objections 4, 5 and 6 to the Type 3 infringement. Accordingly, the findings I have made at [288]-[305] (Objection 4), [308]-[310] (Objection 5) and [313] (Objection 6) above equally apply.
International Roaming: Post-Paid Service Plans (Digital Purchase) / International Roaming: Pre-Paid Service Plans (Digital Purchase): the Type 5 infringement and the Type 6 infringement
324 Subject to one qualification raised by Upaid, the parties agree that the analysis for the Type 5 infringement is the same as the analysis for the Type 1 infringement, and that the analysis for the Type 6 infringement is the same as the analysis for the Type 2 infringement.
325 The qualification is that Upaid submits that, in the Type 5 infringement and in the Type 6 infringement, an additional transaction provider is involved. The additional transaction provider is a third party roaming network provider, such as the AT&T mobile telecommunications network. I note, however, that the existence of an additional transaction provider of the kind now referred to is not particularised with respect to the Type 5 infringement (see para 1.41 of the particulars) or the Type 6 infringement (see para 1.51 of the particulars). The only significance of Upaid’s qualification appears to be that there will be others making up a “plurality” of transaction providers, although in each case it only relies on Telstra as the transaction provider who performs the alleged “settling” step.
UPAID’S PARTICULARISED CASE: CLAIM 1 OF THE 646 PATENT
Introduction
326 The following is a summary of each type of infringement as particularised. Once again, I have included a reference to the relevant paragraph numbers in the particulars.
A Pre-Paid Service User Acquiring a Third Party Product While Not Roaming
327 This alleged type of infringement concerns the provision (including purchase) and/or use of a product using a pre-paid Telstra account when the user is not using an international roaming service. In short, the product is provided and/or used by the user using Telstra’s Communications Network whilst in Australia.
328 Paragraphs 19.1-19.3 particularise how a member of the public becomes an “authenticated user”. Paragraph 19.4 particularises, by reference to Part B2 of Schedule 1, the products which are available. These products are “communication services” and the “commercial transactions” that are associated with those services.
329 “Commercial transactions” associated with the “communication services” occur when Telstra:
accepts a request for the purchase or use of a “communication service” (para 19.4(i));
adjusts, verifies or sets up a user account in connection with the purchase or use of a “communication service” (para 19.4)(ii)); or
settles an amount with a third party in relation to the purchase or use of a communication service (para 19.4(iii)).
330 Paragraphs 19.5, 19.5A and 19.6 particularise what constitutes the “enhanced services platform” and the “plurality of networks”.
331 The “enhanced services platform” is the hardware and software required to perform certain processes and to provide certain services, including the enhanced communication services identified in Schedule 2. This platform is suitable for providing “commercial transactions” and the pre-paid services described in various parts of Schedule 1 to the particulars via a plurality of networks: para 19.5.
332 The networks by which the “communication services” and the “commercial transactions” associated with these services are provided depend on the circumstances in which the authenticated user is communicating at the relevant time, including where (in Australia) the user is situated. However, in all cases, the networks include at least one transport network and at least one access network in Telstra’s Communications Network. The (at least one) transport network and the (at least one) access network in Telstra’s Communication Network constitute “a plurality of networks” for the purposes of this type of infringement: para 19.5A.
333 Paragraphs 19.7-19.11 address the particular conduct said to constitute this alleged type of infringement.
334 Using the “enhanced services platform”, Telstra has accepted requests for a product from an authenticated user. The request originates from any one of a plurality of networks of different types comprised within Telstra’s Communications Network: para 19.7. This is the “accepting” step of claim 1 of the 646 patent.
335 Telstra has verified whether the authenticated user is authorised to receive the selected product and that a user account associated with the user has sufficient amounts of value available for payment. Telstra has approved the user to receive the selected product: para 19.8. This is the “verifying” step of claim1 of the 646 patent.
336 Telstra has provided the selected product by allowing the authenticated user to purchase, download or obtain access to the selected product from Telstra: para 19.9. This is the “providing” step of claim 1 of the 646 patent.
337 Telstra has:
adjusted an associated user account of the user according to terms specified by Telstra (including the price for purchase) (para: 19.10(i)); and
adjusted an associated user account of the user for usage charges associated with the request and provision of the product (para 19.10(ii)).
338 With respect to the adjustment referred to in para 19.10(i) of the particulars, Upaid says (in para (a) of the additional particulars relating to paras 19.1-19.11) that Telstra has adjusted the user account in accordance with the terms which apply to the provision, use or both the provision and use of the products.
339 With respect to adjustment of the associated user account for usage charges, “rating engines” have been used for “dynamically calculating” the charges: para 19.10(ii)).
340 The adjustments consist of Telstra debiting, crediting, decrementing or incrementing the associated user account. In the case of para 19.10(ii) of the particulars, the usage charges are the adjustments for amounts of value, time, data, volume or other adjustments which are made in accordance with Telstra’s terms which apply to the provision, use or both the provision and use of the products: para 19.10A.
341 The adjustments to the user account constitute the “charging” step of claim 1 of the 646 patent.
342 Telstra has determined the amount it owes to the third party provider of the selected product using data recorded at about the time the selected product is provided (“real-time settlement data”). This is the “processing” step of claim 1 of the 646 patent.
343 In the context of the allegations of infringement of claim 1 of the 646 patent, I will refer to this alleged type of infringement as the Type 1 infringement.
A Pre-Paid Service User Acquiring a Telstra Product While Not Roaming and Paying for it by Credit / Debit Card
344 This alleged type of infringement concerns the provision (including purchase) and/or use of a product using a pre-paid Telstra account (when the user is not using an international roaming service) where payment is made by credit or debit card.
345 In a number of respects, the description of this alleged type of infringement corresponds closely to the description of the Type 1 infringement summarised at [327]-[343] above. There are, however, differences.
346 Paragraphs 19.12-19.14 particularise how a member of the public becomes an “authenticated user”. These paragraphs differ from the corresponding paragraphs concerning the Type 1 infringement in respect of the data packs and services on offer. Significantly, this alleged type of infringement does not involve the MOG product. Para 19.15 particularises, by reference to Parts A5, A6 and B1 of Schedule 1, the products that are available. These products are “communication services” and the “commercial transactions” that are associated with these services. Paragraph 19.15 corresponds to para 19.4, summarised at [328]-[329] above, in particularising when the “commercial transactions” associated with the “communication services” occur.
347 Paragraphs 19.16, 19.16A and 19.17 particularise the “enhanced services platform” and the “plurality of networks” in terms which are substantially the same (for presently relevant purposes) as paras 19.5, 19.5A and 19.6 summarised at [330]-[332] above.
348 Paragraphs 19.18-19.22 address the particular conduct said to constitute this alleged type of infringement.
349 Using the “enhanced services platform”, Telstra has accepted requests for a product from an authenticated user. The request originates from any one of a plurality of networks of different types comprised within Telstra’s Communications Network: para 19.18. This is the “accepting” step of claim 1 of the 646 patent.
350 Telstra has verified that:
the authenticated user is authorised to receive the selected product and has specified an appropriate means for payment (being a payment facility provided by one of the financial providers specified in Part C of Schedule 1) (para 19.19(i));
the financial provider has approved the crediting of an amount to a user account associated with the authenticated user (para 19.19(ii)); and
a user account associated with the authenticated user has a sufficient amount available for payment for purchase of the product (para 19.19(iii)).
This is the “verifying” step of claim 1 of the 646 patent.
351 Following verification, Telstra has authorised the authenticated user to receive the selected product: para 19.19.
352 Telstra has provided the selected product to the authorised user: para 19.20. This is the “providing” step of claim 1 of the 646 patent.
353 Paragraphs 19.21 and 19.21A, and paragraph (a) of the additional particulars relating to paras 19.12-19.22, particularise that Telstra has adjusted an associated user account. Those paragraphs of the particulars are in materially the same terms as paras 19.10 and 19.10A, and paragraph (a) of the additional particulars relating to paras 19.1-19.11, summarised at [337]-[340] above. The adjustments to the user account constitute the “charging” step of claim 1 of the 646 patent.
354 In para 19.22, Upaid says that, using the enhanced services platform, Telstra has determined the amount that the provider of the payment means owes Telstra for the provision of the selected product using data that was recorded at or about the time the selected product was provided. This is “real-time settlement data” for the purposes of the claim. This is the “processing” step of claim 1 of the 646 patent.
355 In the context of the allegations of infringement of claim 1 of the 646 patent, I will refer to this alleged type of infringement as the Type 2 infringement.
A Pre-Paid Service User Making Phone Calls To / Receiving Phone Calls From A Non-Telstra Network
356 This alleged type of infringement involves a pre-paid user making phone calls to or receiving phone calls from a third party network. Paragraph 19.26 of the particulars says that Telstra has allowed and continues to allow an authenticated user to use “communication services” in the form of phone calls to communicate with users who are subscribed to mobile communication networks in Australia which are “not marketed under a Telstra brand”. Those networks are operated by a Carrier (as defined) or by Telstra under a Mobile Virtual Network Operator Arrangement.
357 The steps that are particularised for this alleged type of infringement have features in common with the steps particularised for the Type 1 infringement.
358 Thus, as with the Type 1 infringement, Upaid relies on “communication services” and “commercial transactions” that are associated with the “communication services”. The circumstances in which the “commercial transactions” occur are particularised in para 19.26A in terms materially the same as in para 19.4 as summarised at [328]-[329] above.
359 However, para 19.26A also says that the “communication services” consist of Telstra’s carriage of that part of the call which takes place on Telstra’s Communications Network. In the case of a call by the authenticated user, the “communication services” consist of the carriage of the call from the authenticated user on Telstra’s Communications Network to the point of interconnection with the network to which the recipient of the call has subscribed. In the case of a call to an authenticated user, the “communication services” consist of the carriage of the call on Telstra’s Communications Network from the point of interconnection with the network to which the caller is subscribed to the authenticated user.
360 Paragraphs 19.27 and 19.27A of the particulars describe the “enhanced services platform” in materially the same terms as paras 19.5 and 19.5A with respect to the Type 1 infringement. These paragraphs define the “plurality of networks” as at least one access network and at least one transport network in Telstra’s Communications Network. Paragraph 19.29 says that Telstra has accepted requests for call services from the authenticated user, such request originating from any one of a plurality of networks of different types comprised within Telstra’s Communications Network or a mobile communications network in Australia not marketed under a Telstra brand.
361 In the context of the allegations of infringement of claim 1 of the 646 patent, I will refer to this type of infringement as the Type 3 infringement.
A Pre-Paid Service User Acquiring a Product While Roaming
362 This alleged type of infringement involves a pre-paid service user acquiring a product (either a Telstra product or a third party product) while roaming. In light of the objections made, it is not necessary for me to descend to further detail of this alleged type of infringement for the purposes of the present application.
363 In the context of the allegations of infringement of claim 1 of the 646 patent, I will refer to this alleged type of infringement as the Type 4 infringement.
A Pre-Paid Service User Using Data Services While Roaming
364 This alleged type of infringement involves a pre-paid service user using data services while roaming. In light of the objections made, it is not necessary for me to descend to further detail for the purposes of the present application.
365 In the context of the allegations of infringement of claim 1 of the 646 patent, I will refer to this alleged type of infringement as the Type 5 infringement.
A Pre-Paid Service User Making / Receiving Phone Calls While Roaming
366 Telstra has provided access to international roaming services automatically to authorised users of its pre-paid service plans: para 19.61 The international roaming services include access to Roaming Networks and the ability to use “communication services” in the form of phone calls: para 19.62. In light of the objections made, it is not necessary for me to descend to further detail for the purposes of the present application.
367 In the context of the allegations of infringement of claim 1 of the 646 patent, I will refer to this alleged type of infringement as the Type 6 infringement.
OBJECTIONS TO THE PARTICULARISED CASE: CLAIM 1 OF the 646 PATENT
Introduction
368 Telstra’s objections fall within the following broad categories:
“Commercial transactions” (Objection 1);
“Plurality of networks of different types” (Objection 2);
“Charging” step (Objection 3);
“Dynamically calculating usage charges” (Objection 4);
“Verifying” step (Objection 5);
Data services (Objection 6).
A Pre-Paid Service User Acquiring a Third Party Product While Not Roaming: the Type 1 infringement
Objection 1: “Commercial transactions”
Introduction
369 In order to deal with this ground of objection, it is necessary to say something about the structure and features of claim 1 of the 646 patent.
370 Claim 1 identifies a number of steps. It is convenient to refer to these as the “accepting”, “verifying”, “providing”, “charging” and “processing” steps.
371 The “accepting” step involves accepting a request from an authenticated user to provide at least one of a “communication service”, a “commercial transaction” and “user account information”.
372 The “verifying” step involves verifying whether the authenticated user is authorised to receive the requested service(s) and that, in relation to a request for a “communication service” and/or “commercial transaction”, there is a sufficient amount available in an associated account for payment of the requested service(s). This signifies that the claimed method is concerned with services for which payment is required.
373 The “providing” step involves providing at least one of the “communication service”, the “commercial transaction” and the “user account information” based upon fulfilment of the “accepting” and “verifying” steps.
374 It is apparent from my recitation of these steps that claim 1 distinguishes between a “communication service”, a “commercial transaction” and “user account information” which can be requested by an authenticated user. The steps of the claimed method are then directed to the request that is made—namely, for a “communication service”, a “commercial transaction” or “user account information” or for two of them or all of them.
375 For present purposes, “user account information” can be put to one side because “user account information” is not involved in this alleged type of infringement.
376 Thus, taking as an example a request for a “commercial transaction”, the claimed method involves and requires “accepting” a request for the “commercial transaction” from an authenticated user, “verifying” that the user is entitled to receive the “commercial transaction” and that an associated account has sufficient funds to pay for it, and “providing” the “commercial transaction”, based upon fulfilment of the “accepting” and “verifying” steps.
377 At this stage, two further things should be noted.
378 First, so far as relevant to this alleged type of infringement, there is a clear distinction in the language of the claim between a “communication service” and a “commercial transaction”.
379 Secondly, in the language of the claim, each is characterised as something that is separately requested and must be provided, subject to fulfilment of the “accepting” and “verifying” steps relating to the request. Put another way, for the purposes of the claimed method, a “commercial transaction” must be something that is discretely requested and provided. Indeed, where a “commercial transaction” is involved, each step of the claimed method must be directed to that discrete subject matter, separate from, say, a “communication service”. The same analysis applies when the subject matter is a “communication service”.
Telstra’s Submissions
380 This objection concerns Upaid’s characterisation of the “commercial transaction” said to be involved in this alleged type of infringement.
381 The particulars state that for this alleged type of infringement “commercial transactions” as well as “communication services” are involved. It is clear that when referring to “communication services” and “commercial transactions”, Upaid is importing a reference to a “communication service” and “commercial transaction” as used in the claim.
382 The “commercial transactions” occur in the three circumstances particularised in para 19.4. Telstra submits that this characterisation is not tenable as a matter of claim language, for the following reasons.
383 First, a “commercial transaction” cannot be the acceptance of a request for the purchase or use of a “communication service”: para 19.4(i). Claim 1 requires the “commercial transaction” to be something different from the acceptance of a request to purchase or use a “communication service”.
384 Secondly, a “commercial transaction” cannot be the adjustment of an account in connection with the purchase or use of a “communication service” (para 19.4(ii)) because the “charging” step of the method forms part of the requirement for the provision of a “communication service”.
385 Thirdly, a “commercial transaction” cannot be “[settling] an amount with a third party in relation to the purchase or use of a communication service”: para 19.4(iii). The activities of requesting/accepting, verifying, providing, charging and processing cannot be something said to apply to a third party transaction.
Upaid’s Submissions
386 Upaid submits the provision of either a “communication service” or a “commercial transaction” is sufficient to practise the claimed invention.
387 Upaid submits that its primary case is that the “accepting” step is satisfied, because a request to purchase, say, a MOG subscription is a request to provide a “communication service”, the service being the provision of access to music tracks and albums in the form of data that is streamed or downloaded to the user’s mobile phone. Upaid argues that the communication service includes services that facilitate the activity of telephonic communication, and Internet services and online services (such as the MOG product), that involve communicating data over the Internet to a mobile phone.
388 Upaid advances an alternative case. It submits that, by accepting a request from an authenticated user and providing the MOG product, Telstra has provided a “commercial transaction”. Upaid relies on Dr Nicholls’ evidence that a “commercial transaction” is “any transaction in which there is a payment of valuable consideration, such as money, in exchange for something”.
389 Upaid submits that Telstra has proceeded on a misreading of the particulars. It says that it “does not rely on the act of Telstra accepting the commercial transaction as being the commercial transaction”. In the context of a MOG subscription, Upaid argues that the “commercial transaction” is the payment of a subscription fee in exchange for the MOG product. Upaid says that Telstra “accepts” the user’s request for that commercial transaction to occur.
Consideration and Conclusion
390 The first sentence of para 19.4 of the particulars is directed to the purchase of products, not the use of products that have been purchased. The products are defined as “communication services” and “commercial transactions” associated with the “communication services”. It is clear that, by adopting the expressions “communication services” and “commercial transactions” in its particulars, Upaid is invoking a reference to a “communication service” and a “commercial transaction”, as identified in the claim.
391 I accept Telstra’s submission that the claimed method is not one where the “commercial transaction” can be the acceptance of a request for a “communication service”. For the purposes of claim 1, a “commercial transaction” is something that is, itself, requested by an authenticated user and, having been requested, must then be provided, subject to fulfilment of the “accepting” and “verifying” steps in relation to the “commercial transaction”, in order for the claimed method to be practised. Similarly, a “communication service” is something that is, itself, requested by an authenticated user and, having been requested, must then be provided subject to fulfilment of the “accepting” and “verifying” steps in relation to the “communication service”. The particulars seek to use the language of claim 1 with regard to a “communication service” and a “commercial transaction” but, in so doing, confuse the two elements.
392 The same applies to Upaid’s particularisation of the “commercial transaction” as an activity in which the user’s Telstra account is adjusted for the purchase or use of a “communication service”. Here, adjusting the account comprehends “charging” the account, one of the essential steps of the claimed method. Where the provision of a “commercial transaction” is involved (ie the “commercial transaction” has been requested and provided), it is the “charging” of the authorised account for the “commercial transaction” that is required, not the charging of the account for a “communication service”. It should be noted in this connection that the claimed method has a particular requirement in relation to charging for a “communication service” (the use of rating engines for dynamically calculating usage charges) which does not apply to charging for a “commercial transaction”, thereby confirming the distinction between a “communication service” and a “commercial transaction” for the purposes of the claimed method.
393 Each characterisation of the “commercial transaction” in para 19.4 of the particulars involves an activity concerning a “communication service”, notwithstanding that claim 1 distinguishes between a “communication service” and a “commercial transaction” and requires each step of the method to be applied discretely to the “communication service” and/or the “commercial transaction”, depending on the particular request that is made.
394 Upaid’s characterisation of the “commercial transaction” in the particulars is not merely confusing; its case, so based, is not tenable.
395 The alternative cases that Upaid now advances in submissions are an attempt to avoid this problem, but these alternatives are not cases that Upaid has particularised. Moreover, difficulties remain.
396 First, the so-called primary case now advanced by Upaid seems to be one in which the “communication service” is said to be provided by both purchasing, say, a MOG subscription as a product, and then using the MOG subscription. But the evidence shows that both purchase and use are distinctly different activities involving distinctly different steps. I accept Telstra’s submission that, by putting its so-called primary case in this way, Upaid conflates the two different activities. Moreover, each seems to be a distinctly different alleged type of infringement.
397 Secondly, it is unclear whether the alternative case to the so-called primary case now advanced by Upaid suffers from the same problem. On the one hand, Upaid argues that Telstra has provided a “commercial transaction” each time that it accepts a user’s request to purchase, say, a MOG subscription. So expressed, the alternative case is one of purchasing a product, not using it. This view of Upaid’s so-called alternative case also seems to be advanced in submissions it has made in respect of Objection 4 to the Type 1 infringement, considered below at [419]-[440]. On the other hand, Upaid argues that the “commercial transaction” is the payment of a subscription fee in exchange for the MOG product. So expressed, this suggests the possibility of an exchange involving use of the product itself.
398 Thus, the primary case and the alternative case as now advanced would, if particularised in this way, be confusing and embarrassing.
399 I should record that my consideration of this objection does not require me to determine the correctness or otherwise of Dr Nicholls’ proffered construction of the expression “commercial transaction”.
Objection 2: “Plurality of networks of different types”
Telstra’s Submissions
400 The method of claim 1 is characterised in the chapeau to the claim as a communication method using an enhanced services platform for providing pre-paid services and commercial transactions via a “plurality of networks”. The “accepting” step requires a request from an authenticated user that originates from any one of a “plurality of networks of different types”. Telstra submits that this requirement of the “accepting” step means that each network in the plurality must be one from which a request can originate.
401 Paragraphs 19.5A and 19.7 of the particulars identify the “plurality of networks” to be networks of different types comprised within Telstra’s Communications Network, being at least one transport network and at least one access network. Having regard to the definition of Telstra’s Communications Network (see [104] above), Telstra submits that the evidence shows that a request cannot originate from a transport network: see [81]-[82] above. The request originates from the user’s device, which must first use the access network in order to communicate on the network. Thus, Telstra submits, this alleged type of infringement is untenable.
Upaid’s Submissions
402 Upaid says that it does not assert that a transport network is a network from which a request can originate.
403 Upaid argues that para 19.5A of the particulars refers to the “plurality of networks” referred to in the chapeau to the claim. It is in that context that it says that it has referred to transport networks being one of the “plurality of networks” by which pre-paid services and commercial transactions may be provided.
404 Upaid argues that the requirement of the “accepting” step (namely, that the request originate from one of a “plurality of networks” of different types) is addressed in para 19.7 of the particulars. Upaid says that it does not assert in para 19.7 that the transport network is a network from which a request may originate. It says that the different networks from which the requests originate may be any one of Telstra’s 3G, NextG or 4G Networks. In this connection, the evidence shows that a request for a MOG subscription can originate from either a 3G Network or a 4G Network.
Consideration and Conclusion
405 Upaid’s interpretation of the particulars is not one that is apparent on the face of this part of the document. It rests on the argument that the “plurality of networks” in para 19.7 has a different meaning to the same expression in para 19.5A (which does concern access networks and transport networks), even though para 19.5A defines the expression “plurality of networks” without limitation as to when the definition is to be applied, and even though paras 19.5A and 19.7 each refer back to the “enhanced services platform” defined in para 19.5.
406 Further, para 19.7 refers to Telstra’s Communications Network. This expression is defined as “at least one of” Telstra’s 3G, NextG and 4G networks. Thus, by importing the defined expression, para 19.7 cannot be referring to the “plurality” which Upaid advances in submissions.
407 I conclude that, on a proper reading of the particulars for this alleged type of infringement, Upaid has not particularised the case it now advances. Further, I accept that the particularised case, to the extent that it relies on a transport network as one of the “plurality of networks” from which a request can originate, is not tenable as an infringement of claim 1. However, this objection can be overcome by amendment.
408 The case that Upaid now advances rests on giving the expression “plurality of networks” a different meaning depending on whether the expression is used in the chapeau to the claim or whether it is used in the “accepting” step. This apparent inconsistency has not been explained. It is true that the “accepting” step refers to the “plurality of networks” being of “different types”, whereas this elaboration is not found in the chapeau. But if a plurality of networks of different types is required for the purpose of the “accepting” step which characterises one of the essential features of the invention—so that there must be a plurality of networks of different types—it is not readily apparent why the “plurality of networks” referred to in the chapeau would be understood differently. However, having raised this curiosity, I express no concluded view on the question.
Telstra’s Submissions
409 Following the “providing” step, the authorised account is “charg[ed]”. Paragraph 19.10 of the particulars refers to adjustments made to a user account for the purchase price of the selected product and for usage charges associated with the request and provision of the product. Paragraph 19.10A of the particulars says that the adjustments consist of Telstra debiting, crediting, decrementing or incrementing the user account. Telstra submits that it is not tenable to suggest that the “charging” step of claim 1 involves crediting or incrementing the user’s Telstra account.
Upaid’s Submissions
410 Upaid submits that a distinction should be drawn between “charging” an account and billing an account. “Charging” is a precursor to billing, and the charge may be zero. Billing does not occur unless the sum of all charges involves a cost to the user. “Charging” also encompasses a zero increment or decrement.
411 Upaid submits that the evidence establishes that, for a pre-paid service plan, the user’s Telstra account is decremented by the value of, say, the subscription fee for the MOG product. Upaid submits that, as a matter of substance, there is no dispute between the parties about that fact.
412 Upaid submits that its allegation that crediting or incrementing an account is “charging” the account is supported by dependent claim 7 and a corresponding passage in the complete specification which I have quoted above in the context of claim 1 of the 853 patent: see [288].
413 Upaid also relies on some of Telstra’s discovered documents (Exhibits 1 and 2). I have already discussed one of the documents (Exhibit 1) in the context of claim 1 of the 853 patent: see [286] and [297]-[299] above. The other document on which Upaid relies (Exhibit 2) states (at page 7 of 44):
[Certain] servers may send $0 content subscription charges …
Consideration and Conclusion
414 Claim 1 of the 646 patent refers to “charging” an authorised account. The claim uses the word “charging” in the sense I have previously described when dealing with a similar objection concerning the particularisation of the alleged infringements of claim 1 of the 853 patent: see [213] above.
415 This meaning is confirmed by the “verifying” step of the claimed method which requires verification of whether the account associated with the authenticated user has a sufficient amount available for payment of the requested service or transaction. As I have previously found, so far as the method is directed to the provision of a “communication service” and/or “commercial transaction”, it is concerned with a “communication service” and/or “commercial transaction” for which payment is required.
416 Contrary to Upaid’s submission, this construction of the word “charging” is also confirmed by the passage from the complete specification which I have quoted at [288] above. I refer to, but will not repeat, my findings expressed at [289]. For the same reasons, claim 7 does not assist Upaid’s argument.
417 Thus, in the context of a pre-paid service, to which this alleged type of infringement and to which claim 1 of the 646 patent are directed, “charging” refers to debiting or decrementing an account. It is not reasonably open to argument that “charging” refers to crediting or incrementing an account. Any case based on crediting or incrementing an account is not tenable.
418 With regard to Upaid’s reliance on Exhibit 1, I refer to, but will not repeat, the observations I have made at [297]-[299]. With regard to the other document on which Upaid relies (Exhibit 2), similar comments apply. It does not materially assist Upaid’s submission. This document, like Exhibit 1, is not discussed by Dr Nicholls. The purpose of the document is to detail the functional requirements of a (then) new interface in Telstra’s systems. The reason for the system having a functionality of sending “$0 content subscription charges” is not discussed. It is not at all apparent that it refers to “charging” an account for a particular service (a “communication service” or a “commercial transaction”) for which payment is required. In any event, the described functionality certainly does not involve crediting or incrementing an authorised account, as Upaid has particularised.
Objection 4: “Dynamically calculating usage charges”
Telstra’s Submissions
419 Paragraph 19.10 of the particulars refers to two adjustments to a user’s Telstra account. The first is an adjustment which is, apparently, for the purchase price specified by Telstra for the selected product. The second is an adjustment for usage charges associated with the request and provision of the product. Telstra’s objection covers the second adjustment.
420 Telstra submits that it is unclear whether the usage charges are intended to cover carriage charges, such as data charges, or transaction type charges for a fixed price. If the usage charges cover fixed price transactions, such as the purchase of a MOG subscription, Telstra submits that Upaid’s case is untenable because such a purchase does not involve dynamic calculation. The purchase price of the MOG subscription is determined prior to the user’s request to purchase the subscription.
421 Further, Telstra submits that, in any event, it does not make carriage type usage charges in respect of the MOG product because usage of the product is unmetered. This is established by the evidence: see [79]-[80] above. Thus, the allegation that charging for services such as the MOG streaming service includes the feature of dynamically calculating usage charges, is untenable.
Upaid’s Submissions
422 Claim 1 of the 646 patent only requires the use of rating engines for dynamically calculating usage charges in respect of the provision of a “communication service”. Upaid submits that its so-called alternative case (see [388] above) is one with respect to a “commercial transaction” and thus the specific requirement of the “charging” step with respect to a “communication service”, is not applicable.
423 With respect to its primary case, which concerns the provision of a “communication service”, Upaid submits that the specific “charging” step is present when the MOG streaming service is used.
424 In advancing this case, Upaid relies on Dr Nicholls’ evidence. Dr Nicholls argued that “dynamically calculating usage charges” means that there is a calculation by reference to parameters, such as units of time, units of data or some other units of measure, of the price or value to be applied. The “dynamic” aspect of the price or value calculation involves changes in the calculation in response to movements in the parameters being measured.
425 Dr Nicholls argued that the presence or absence of “metering” is not determinative of whether there is “charging” using rating engines to calculate usage charges because the dynamic calculation might be that a “zero” charge is determined. By reference to certain documents discovered by Telstra, Dr Nicholls argued that, even though the use of a MOG streaming service is “unmetered”, Telstra continually records changes in data use by the user who is using the MOG streaming service and continually applies a “zero” rating or “zero-rated” price for data use associated with the MOG service within one or several of Telstra’s systems involved in charging. He said that, despite the fact that Telstra may apply a “zero” rating or “zero” price for data use associated with the MOG streaming service, it is necessary for the dynamic calculation of usage charges to occur because Telstra’s systems need to check whether a particular user will be charged or not. I pause here to note that, in this argument, Dr Nicholls appears to use the word “charge” in the sense in which I have found that “charging” must be understood in claim 1: see [213] above.
426 Upaid submits that the specific “charging” step with respect to the provision of a “communication service” has two limbs. The first limb is the use of rating engines. It submits that Telstra does not dispute that it uses rating engines when providing the MOG streaming service. The second limb is the use of rating engines “for dynamically calculating usage charges”. Upaid submits that Telstra measures the amount of data transmitted where the user accesses the MOG product when not roaming. Telstra then determines that the measured data should be “zero-rated” because unlimited data usage is included in the subscription fee for the product. Upaid submits that at least one effect of the “zero” rating is that it “conditions the calculation of the charge to the user’s account so that [the account] is not decremented”.
427 Upaid says that its primary case is that the “charging” step involves both a fixed price charge and a usage charge. So far as the fixed price charge is concerned, Upaid bases its submission on evidence given by Dr Nicholls that, in the context of a telephone call, a usage charge would include the cost of a “flag fall”, which would typically be a fixed amount. But Upaid says that this aspect of its submission does not appear to ultimately matter because the data usage component involves the use of rating engines for dynamically calculating usage charges, as claimed.
428 Upaid submits that there is a real question to be tried as to whether the determination that measured data usage should be “zero rated” is the use of “rating engines for dynamically calculating usage charges associated with at least the communication service”, as claimed.
429 Additionally, Upaid says that data records for banner advertisements and rich media advertisements (which are not auto-video content) that appear on unmetered websites are passed on in Telstra’s systems. Upaid submits that it is clear that Telstra charges usage charges for advertisements which appear on the MOG website, in the course of a Telstra user subscribing to the MOG product, and that these charges are dynamically calculated using rating engines. It submits that these charges are charges associated with a “communication service”.
430 Upaid also submits that the feature of “using rating engines for dynamically calculating usage charges” should be read as “suitable for”, so that it is enough to prove infringement that Telstra’s rating engines are suitable for dynamically calculating user charges associated with the provision of a “communication service”, whether or not they are in fact used for that purpose. It submits that this is consistent with the following observation of the Full Court in Garford Pty Ltd v DYWIDAG Systems International Pty Ltd (2015) 110 IPR 30; [2015] FCAFC 6 (Garford) at [122]:
A claim to an apparatus for a particular purpose is a claim to an apparatus that is suitable for that purpose: see, for example, Bühler AG v Satake UK Ltd [1997] RPC 232 per Jacob J; Insituform Technical Services Ltd v Inliner UK Plc [1992] RPC 83 at 102 per Aldous J. To establish infringement of such a claim it is not necessary for the patentee to establish that the apparatus is intended to be used for that purpose. The patentee need only show that the apparatus is suitable for that purpose…
Consideration and Conclusion
431 As with earlier objections, Upaid’s submissions proceed on the basis of the alternative cases it has advanced in submissions, not the case it has particularised for this alleged type of infringement.
432 At the risk of some repetition, it is necessary to emphasise certain features of the claimed method.
433 When the claimed method is directed to the request for, and provision of, a “communication service” or a “commercial transaction”, it is directed to a “communication service” or “commercial transaction” for which payment is required. This is the importance of that part of the “verifying” step which requires verification that an account associated with the authenticated user has a sufficient amount available for payment of the requested “communication service” or “commercial transaction”.
434 The “charging” step must be seen in this light. The charge is stated to be one for providing the “communication service” or “commercial transaction”. As I have previously found, “charging” bears the meaning I have discussed at [213] above. For this reason, “charging” cannot mean crediting or incrementing an account. But also, it cannot mean posting a “zero” charge. In other words, the claimed method is not directed to the request for, and provision of, a “communication service” or “commercial transaction” for which there is no charge to the user who makes the request.
435 Where the claimed method is directed to a “communication service”, the “charging” step includes the use of rating engines for dynamically calculating the usage charges associated with the service. In this connection, the use of the rating engines is not simply for calculating the usage of data. Nor is the use of the rating engines for simply carrying out, in some general way, some other function concerned with calculating the usage of data. Claim 1 requires the rating engines to be used, as part of the “charging” step, for calculating usage charges associated with the service for which payment is required.
436 I accept Telstra’s submission that, with respect to a “communication service”, the requirement for the use of rating engines for dynamically calculating usage charges cannot apply to charges which are purely fixed charges, such as for the purchase of a MOG subscription. Upaid’s submission that dynamically calculated usage charges could include, as one component, a fixed amount, such as a flag fall amount, seems to suggest that with, say, a MOG subscription, the fixed amount could be the price for the MOG subscription. But, if that is so, what is the dynamically calculated usage charge?
437 I do not accept that it is reasonably open to argument that measuring data and applying a “zero” rating answers the description of the “charging” step of the claimed method. This requirement cannot be satisfied by measuring data usage and determining that there will be no charge for the “communication service”. Any case so based is not tenable.
438 There is a substantial factual debate between the parties as to whether Telstra’s systems do, in fact, assign a “zero” dollar value for data usage in respect of unmetered services. The determination of the present objection does not depend on any resolution of that debate because even if, contrary to Telstra’s submission, there is a so-called “charge” of a “zero” dollar amount, such a charge is not “charging” an authorised account for providing the “communication service”, as understood by the claimed method.
439 With regard to Upaid’s submission that Telstra charges usage charges for advertisements which appear on the MOG website in the course of a user purchasing a MOG subscription, I accept Telstra’s submission that such charges, if made, are not charges for providing the “communication service” (ie for the user using the MOG streaming service); nor for that matter are they charges for providing a “commercial transaction” (ie the purchase of a MOG subscription). They are charges for the data usage in providing the advertisement.
440 With regard to Upaid’s submission based on the principles discussed in Garford, it is not sufficient in the present case merely to show that Telstra’s rating engines are suitable for dynamically calculating usage charges associated with the provision of a “communication service”, whether or not they are in fact used for that purpose. The requirement of the claim is not simply that rating engines be used. The requirement of the claim is that there be “charging” for providing the “communication service”, using rating engines to calculate the charges. The claimed invention in the present case is distinguishable from the claimed invention considered in Garford to which the Full Court’s observation applies. Indeed, in the present case, the invention is directed to a method, not an apparatus. In the present case, “charging” necessarily involves “dynamically calculating usages charges”.
A Pre-Paid Service User Acquiring a Telstra Product While Not Roaming and Paying for it by Credit / Debit Card: the Type 2 infringement
Objections 1, 2 and 3
441 Objections 1, 2 and 3 to the Type 1 infringement respectively are made with respect to this alleged type of infringement. Accordingly, the findings I have made at [390]-[399] (Objection 1), [405]-[408] (Objection 2) and [414]-[418] (Objection 3) above apply.
Objection 4: “Dynamically calculating usage charges”
442 This objection can be dealt with briefly. It concerns the allegation of “charging” a fixed price. As I have noted at [346] above, this alleged type of infringement does not involve the MOG product. Upaid says that Telstra has not provided any basis for asserting that the analysis used with respect to the MOG product, a third party product, will also apply to the supply of Telstra products. However, Telstra’s point is that any product that is acquired purely for a fixed price does not involve the use of rating engines for dynamically calculating usage charges. I do not understand Upaid’s submissions with respect to Objection 4 to the Type 1 infringement, in which this particular issue was first raised, to suggest otherwise. Accordingly, in this regard, the findings I have made at [431]-[440] above apply equally to this objection in respect of “communication services” which are acquired or used for a fixed price only. However, there is no evidence before me that Telstra’s products are acquired or used for only a fixed price charge. Thus, I am not satisfied that this objection in relation to this alleged type of infringement has been made out.
Telstra’s Submissions
443 The particularised “verifying” step is summarised as [350] above. Telstra submits that Upaid’s particularisation of the “verifying” step for this alleged type of infringement conflates two separate transactions—the recharge of a pre-paid mobile account, and the acquisition of a product using that account.
444 The recharge of a pre-paid mobile account can be made using a credit card: see [74] above. The payment is made from the customer’s credit account with the financial institution to Telstra, resulting in a credit to the customer’s Telstra account. Payments of this kind can take place on an ad hoc basis. The customer is free to choose the amount and timing of ad hoc recharges. This does not involve the acquisition of, or payment for, a product (distinct from the purchase of credit itself).
445 However, the acquisition of such a product using a pre-paid mobile account does not involve the use of a credit or debit card. It involves debiting the user’s pre-paid Telstra account for the acquisition.
446 Telstra submits that the problem is exacerbated by the reference to the services in Part A6 of Schedule 1. Part A6 refers to “services provided under” certain data packs. Telstra submits that it is unclear whether the product which is purchased is the pack itself or services “provided under” the pack. If it is the latter, Telstra submits that it is unclear what those services are.
Upaid’s Submissions
447 Upaid submits that there is no support for Telstra’s interpretation of the “verifying” step. It argues that the relevant crediting might just as well have been made with respect to the relevant purchase in question, not recharge generally.
448 Upaid also submits that the identification of the services is clear. The products relevant to this alleged type of infringement are the services described in Parts A5, A6 and B1 of Schedule 1. Taking Part A5 as an example, the services are the provision of data connectivity under the various named data plans.
Consideration and Conclusion
449 Upaid’s submissions do not answer the problems exposed by this objection.
450 First, as I have explained above, in presently relevant respects the claimed method is directed to providing a “communication service” or a “commercial transaction” for which payment is required. The method requires an associated account to be “charged” for providing the “communication service” and/or the “commercial transaction” that has (have) been provided. The method is not one directed to, for example, crediting an associated account.
451 As particularised, this alleged type of infringement is concerned with acquiring a product. But, as particularised, it also proceeds as an acquisition in which the provision of the selected product is paid for by a credit or debit card. Such a transaction is not within the contemplation of the claimed method. The claimed method requires an account associated with the authenticated user to be “charged” for the provision. In context, this means the user’s pre-paid Telstra account, not, say, the user’s credit account with a financial institution.
452 Upaid’s response—to the effect that the user might well have credited the account (by recharging it using a credit or debit card) with the relevant purchase in mind—relies on an activity that is extraneous to the claimed method. The “verifying” step of the claimed method requires verification that the associated account has a sufficient amount available for payment for the “communication service” or “commercial transaction” that is requested. Once again, this is the account to be “charged”. The claimed method is not concerned with how or in what circumstances the “sufficient amount” has come to be available in the associated account. Thus, Upaid has particularised a “verifying” step that, confusingly, invokes extraneous matters. Claim 1 does not read onto this alleged type of infringement. It follows that this alleged type of infringement of claim 1 is not tenable.
453 Secondly, whilst the particulars identify the relevant data packs, Upaid’s submission does not answer the problem of failing to distinguish between the acquisition of the data pack itself and the use of data acquired under a particular data pack. The issue is one of clearly identifying what is the “communication service” or “commercial transaction” relied upon for the alleged infringement. In this regard, the particulars are unclear.
A Pre-Paid Service User Making Phone Calls To / Receiving Phone Calls from a Non-Telstra Network: the Type 3 infringement
454 As I have noted, this alleged type of infringement involves a pre-paid user making phone calls to or receiving phone calls from a third party network. The parties appear to be in agreement that the issues raised by these objections for this alleged type of infringement are the same as those discussed in relation to Objections 1 and 3 to the Type 1 infringement. Accordingly, the findings I have made at [390]-[399] (Objection 1) and [414]-[418] (Objection 3) above equally apply.
Objection 2: “Plurality of networks of different types”
Telstra’s Submissions
455 Telstra submits that Objection 2 to the Type 1 infringement also applies to this alleged type of infringement.
Upaid’s Submissions
456 Upaid submits that Telstra’s argument with respect to transport and access networks has no relevance to this alleged type of infringement because of para 19.26A of its particulars: see [358]-[359] above. Further, Upaid submits that para 19.29 of the particulars (see [360] above) makes it clear that the requirement that the request originate from any one of a plurality of networks of different types is satisfied by the user being connected to any one of Telstra’s 3G, NextG or 4G networks or the network of another carrier described in para 19.26 of the particulars.
Consideration and Conclusion
457 Upaid’s submission overlooks the fact that paras 19.27 and 19.27A define the “plurality of networks” in terms referable to Telstra’s transport and access networks. It is not correct to argue, therefore, that Telstra’s transport and access networks have no relevance to this alleged type of infringement. Indeed, notwithstanding paras 19.26, 19.26A and 19.29 of the particulars, the reader is told that, for purposes relevant to this alleged type of infringement, the focus of attention is Telstra’s transport and access networks.
458 This does not appear to be the case that Upaid wishes to advance. If that be so, this objection can be overcome by amendment. However, at the present time, the defined use of “plurality of networks” taken with paras 19.26A and 19.29 includes a transport network. To the extent that this alleged type of infringement relies on a transport network as one of the “plurality of networks” from which a request can originate, it is not tenable as an infringement of claim 1.
Objection 4: “Dynamically calculating usage charges”
Telstra’s Submissions
459 Telstra submits that the suggestion that charges for fixed price transactions involve dynamically calculated usage charges is untenable.
Upaid’s Submissions
460 Upaid submits that Telstra has not provided any basis for asserting that the factual position with respect to the purchase of a MOG subscription, a third party product, will in fact also apply to phone calls. Upaid submits that, by their nature, phone calls are quite different, having, amongst other things, a duration and a charge which may be based on that duration.
Consideration and Conclusion
461 I do not understand Upaid’s submissions with respect to Objection 4 to the Type 1 infringement, in which this particular issue was first raised, to suggest that a purely fixed price transaction is one in which user charges are dynamically calculated. Nevertheless, the basis on which Telstra argues that user charges are not dynamically calculated in relation to call services, is not clear. I am not satisfied that this objection in relation to this alleged type of infringement has been made out.
A Pre-Paid Service User Acquiring a Product While Roaming / A Pre-Paid Service User Using Data Services While Roaming: the Type 4 infringement and the Type 5 infringement
Introduction
462 In submissions, Upaid says that the distinction between the Type 4 infringement and the Type 1 infringement is that, in the Type 4 infringement, the pre-paid user purchases a MOG subscription while roaming overseas, instead of purchasing the subscription in Australia, and uses the product while roaming overseas. I understand Upaid’s reference to “using” the MOG product to be a reference to using the MOG streaming service for which the user has subscribed.
463 Upaid says that the distinction between the Type 4 infringement and the Type 5 infringement is that the Type 5 infringement is directed to the streaming of data, which may occur in the free trial period before the purchase of a MOG subscription, during purchase of a subscription, and in the period following the purchase of a subscription.
464 With one exception, the parties accept that the issues raised by these objections for these alleged types of infringement are the same as those discussed in relation to Objections 1, 2, 3 and 4 to the Type 1 infringement. Accordingly, the findings that I have made at [390]-[399] (Objection 1), [405]-[408] (Objection 2), [414]-[418] (Objection 3) and [431]-[440] (Objection 4—in respect of “communication services” which are acquired or used for a fixed price only) above equally apply.
465 The exception concerns Objection 4. By reference to a document discovered by Telstra, and evidence given by Mr Gibb, Upaid says that, while the MOG streaming service is used overseas while roaming, data usage is dynamically rated and charged.
466 Telstra does not respond to this factual proposition, other than to submit that the Type 4 infringement (as explained by Upaid) appears to relate to the purchase of a MOG subscription and the Type 5 infringement (as explained by Upaid) appears to relate to use of the MOG streaming service. I suspect that the parties may be at cross-purposes on this.
467 As I understand Upaid’s explanation, the Type 4 infringement involves both the purchase of the MOG subscription and the use of the streaming service. For the reasons I have given at [390]-[394] above, this is not at all clear from the particularised case, which manifests confusion between the “communication services” and the “commercial transactions”: see, for example, paras 19.36 (the Type 4 infringement) and 19.50 (the Type 5 infringement) of the particulars which are in materially the same terms as para 19.4 (the Type 1 infringement). Moreover, Upaid’s explanation of the Type 4 infringement seems to involve two distinctly different types of infringement (ie purchasing a product and using a product)—the same confusion that is present in Upaid’s “alternative” cases advanced in submissions with respect to the Type 1 infringement: see [395]-[398] above. There is evidence to suggest that, when using the MOG streaming service while roaming, rating engines are used to calculate data usage which is charged to the user’s pre-paid Telstra account. Thus, to this extent, the factual case in respect of these alleged types of infringement appears to be different to the factual case advanced with respect to the Type 1 infringement, and is thus distinguishable. Therefore, I am not satisfied that Objection 4 in relation to these alleged types of infringement has been made out.
Telstra’s Submissions
468 This objection concerns an alleged lack of clarity in the distinction between the Type 4 infringement and the Type 5 infringement.
469 With regard to the Type 4 infringement, para 19.42 of the particulars says that, using an enhanced services platform, Telstra has accepted requests from authenticated users for a “product” selected from the offered products described in Parts A5, A6 and B of Schedule 1. Parts A5 and A6 identify certain data packs. However, in describing the data packs, Parts A5 and A6 refer to “services provided under” the data packs.
470 With regard to the Type 5 infringement, para 19.54 of the particulars says that, using an enhanced services platform, Telstra has accepted requests from authenticated users for the use of a “data service” selected from amongst the “offered data services”. The “offered data services” are described by reference to Parts A4, A6 and B of Schedule 1. Part A4 identifies certain pre-paid plans and Part A6 identifies certain data packs. Both refer to “the services provided under” the plan/data pack.
471 Telstra submits that it is not clear how the Type 4 infringement differs from the Type 5 infringement. It suggests that Upaid may be seeking to draw a distinction between the acquisition of a product (the Type 4 infringement) and the usage of data services (the Type 5 infringement). However, that distinction is blurred by the use of the words “services provided under” as used in Parts A4, A5 and A6 of Schedule 1.
Upaid’s Submissions
472 Upaid proffers the explanation set out in the introductory section dealing with the objections to these alleged types of infringement: see [462]-[463] above.
Consideration and Conclusion
473 I accept that the distinction between the Type 4 infringement and the Type 5 infringement is unclear. The heading of the Type 4 infringement suggests that the subject matter is the purchase of a product and the heading of the Type 5 infringement suggests that the subject matter is the use of a product that has been acquired. This is the distinction which Telstra has suggested. However, the particulars to each alleged type of infringement blur this distinction, including the use of the words “services provided under” when used in Parts A4, A5 and A6 (as well as other similar parts) of Schedule 1.
474 Also, Upaid’s explanation of the Type 4 infringement is one that involves not just the purchase of a product but both the purchase and use of a product. As I have remarked, this explanation seems to refer to two distinctly different types of infringement.
475 In these respects, the particulars are confusing and embarrassing. It impossible to understand how, precisely, claim 1 is said to have been infringed by these two alleged types of infringement. Upaid’s explanation of the Type 4 infringement and the Type 5 infringement does not dispel the confusion.
A Pre-Paid Service User Making / Receiving Phone Calls While Roaming: the Type 6 infringement
Objections 1 and 3
476 The parties appear to be in agreement that the issues raised by these objections for this alleged type of infringement are the same as those discussed in relation to Objections 1 and 3 to the Type 1 infringement. Accordingly, the findings I have made at [390]-[399] (Objection 1) and [414]-[418] (Objection 3) above equally apply.
Objection 2: “Plurality of networks of different types”
Telstra’s Submissions
477 Telstra submits that Objection 2 to the Type 1 infringement applies to this alleged type of infringement.
Upaid’s Submissions
478 Upaid submits that the networks are different. It relies on paras 19.65A and 19.67 of the particulars.
Consideration and Conclusion
479 Paragraph 19.67 of the particulars says that Telstra has accepted requests for call services where the requests originate from any one of the Roaming Networks. The particulars say that Roaming Networks throughout the world use different types of technologies and are operated by different companies, and hence constitute “networks of different types” for the purposes of claim 1.
480 Paragraph 19.65A of the particulars says that, in all cases, the networks will include at least one transport network and one access network in the Roaming Networks, being “a plurality of networks”.
481 I am not satisfied that this objection in relation to this alleged type of infringement has been made out.
Objection 4: “Dynamically calculating usage charges”
482 This objection is substantially the same aspect of Objection 4 advanced with respect to the Type 3 infringement. It is answered by the findings I have made at [461]. I am not satisfied that this objection in relation to this alleged type of infringement has been made out.
Overview: findings on claim 1 of the 853 patent
483 With regard to the Type 1 infringement, I have found that Upaid’s particularised case:
is not, in a number of fundamental respects, the case that Upaid has advanced in submissions: Objections 1-6;
is, in certain respects, unclear: Objection 1;
is, in certain respects, deficient in terms of the particulars that have been given: Objection 2; and
is not tenable as an infringement of claim 1: Objections 3-6.
484 I have also found that the case that Upaid has advanced in submissions (effectively in substitution for its particularised case) is not tenable as an infringement of claim 1, substantially on the basis of Objection 4 and the consequences that my findings in relation to that objection have for the other objections that have been made concerning the “charging” and “settling” steps.
485 With regard to the Type 2 infringement, I have found that Upaid’s particularised case:
is not, in a number of fundamental respects, the case that Upaid has advanced in submissions: Objections 1-6;
is, in certain respects, unclear: Objection 1;
is, in certain respects, deficient in terms of the particulars that have been given: Objection 2; and
is not tenable as an infringement of claim 1: Objections 3-6.
486 I have also found that the case that Upaid has advanced in submissions (effectively in substitution for its particularised case) is not tenable as an infringement of claim 1, substantially on the basis of Objection 4 and the consequences that my findings in relation to that objection have for other objections that have been made concerning the “charging” and “settling” steps.
487 With regard to the Type 3 infringement, I have found that Upaid’s particularised case:
is not, in certain respects, the case it has advanced in submissions: Objections 2-3; and
is not tenable as an infringement of claim 1: Objections 4-6.
488 With regard to the Type 4 infringement, I have found that Upaid’s particularised case:
is not, in certain respects, the case it has advanced in submissions: Objections 2-3; and
is not tenable as an infringement of claim 1: Objections 4-6.
489 With regard to the Type 5 infringement and the Type 6 infringement, I have made no findings that are specific to the objections that have been made. However, the parties have treated these alleged types of infringement as materially the same so far as the objections are concerned. Thus, the Type 5 infringement and the Type 6 infringement should stand in no different position to the Type 1 infringement and the Type 2 infringement, respectively.
Overview: findings on claim 1 of the 646 patent
490 With regard to the Type 1 infringement, I have found Upaid’s particularised case:
is not, in a number of fundamental respects, the case that Upaid has advanced in submissions: Objections 1-2 and 4; and
is not tenable as an infringement of claim 1: Objections 1-4.
491 I have also found that, to the extent that Upaid has advanced alternative cases in submissions, those cases are not clear. Unless clarified, it is not possible to form a concluded view as to whether the alternative cases are tenable as infringements of claim 1.
492 With regard to the Type 2 infringement, I have found that Upaid’s particularised case:
is not, in a number of fundamental respects, the case that Upaid has advanced in submissions: Objections 1-2;
is not tenable as an infringement of claim 1: Objections 1-3 and 5; and
is not, in any event, clear: Objection 5.
493 With regard to the Type 3 infringement, I have found that Upaid’s particularised case:
is not, in a number of fundamental respects, the case that Upaid has advanced in submissions: Objections 1-2; and
is not tenable as an infringement of claim 1: Objections 1-3.
494 With regard to the Type 4 infringement and the Type 5 infringement, I have reached conclusions similar to those I have reached for the Type 1 infringement in relation to Objections 1 to 3. For additional reasons, I have found that the distinction between the Type 4 infringement and the Type 5 infringement in the particulars is not clear. This is largely due to the fact that, for the reasons I have given, the particulars compound Upaid’s failure to distinguish between infringements allegedly arising from acquiring a product (in the sense of purchasing a product) and infringements allegedly arising from using a product that has been acquired. Upaid’s explanations in submissions have not assisted in providing greater clarity.
495 With regard to the Type 6 infringement, I have reached conclusions similar to those I have reached for the Type 1 infringement in relation to Objections 1 and 3.
Upaid’s submissions
496 Upaid submits that Telstra has not established that it (Upaid) has no reasonable prospect of successfully prosecuting its claims for infringement of claim 1 of the 853 patent and claim 1 of the 646 patent. Thus, according to Upaid, Telstra’s application for summary judgment under s 31A of the Act (and I infer r 26.01 of the Rules) should be dismissed.
497 Upaid also submits that Telstra has not established any basis for striking out the particulars under r 16.21 of the Rules. Alternatively, Upaid submits that if the Court reaches the conclusion that the particulars are deficient in any respect, it should be given the opportunity to consider the Court’s reasons and to make application for leave to re-plead in a manner that it (Upaid) considers to be appropriate.
498 In amplification of this position, Upaid submits that s 31A of the Act requires Telstra to show that Upaid has no reasonable prospect of prosecuting the relevant parts of the proceeding that are the subject of the summary dismissal application. Upaid submits that this is not a power activated by mere deficiencies in pleading. The existence of a reasonable cause of action and the pleading of a reasonable cause of action are distinct concepts: Spencer v The Commonwealth of Australia (2010) 241 CLR 118; [2010] HCA 28 (Spencer) at [23]; White Industries Aust Ltd v Federal Commissioner of Taxation (2007) 160 FCR 298; [2007] FCA 511 at [47]; Butorac v WIN Corporation Pty Ltd [2009] FCA 1503 at [19]. Thus, even if a pleading falls foul of r 16.02 of the Rules, the evidence before the Court may, nonetheless, disclose that a party (against whom a summary dismissal application is brought) has a reasonable cause of action or reasonable prospects of success.
499 Upaid refers to the statement by French CJ and Gummow J in Spencer (at [24]-[26]) that the exercise of the power to summarily terminate a proceeding must be attended with caution. Upaid submits that the power under s 31A of the Act is generally inapt to resolve complex issues of law and fact, or of mixed law and fact. It submits that the present case is of that nature.
500 Upaid also refers to the following convenient summary of relevant principles in relation to the application of s 31A of the Act in Dandaven v Harbeath Holdings Pty Ltd [2008] FCA 955 at [6]:
Success under s 31A does not require a demonstration that the case is hopeless or bound to fail. The following principles are of general application to an application under s 31A:
(a) the Court must be very cautious not to do a party an injustice by summarily dismissing proceedings;
(b) the Court ought not dismiss a claim based on a predictive assessment of prospects, where it is possible that if the claim went to trial, it may succeed;
(c) in a case where evidence can give colour and content to allegations, and where questions of fact and degree are important, the Court should be more reluctant to dismiss a proceeding on the face of a pleading;
(d) it is not Parliament’s intention to require the Court to engage in lengthy and elaborate trials on an interlocutory basis for the purposes of determining whether or not a proceeding has no reasonable prospects of success. It may be necessary for the opposing party to provide no more than an outline of evidence, sufficient to show that there is a genuine dispute, to prevent the summary application becoming a trial;
(e) if there is a real issue of fact or law to be decided, and the rights of the parties depend upon it, it is obviously appropriate that the matter goes to trial. It cannot be said that where there is a real factual dispute and that factual dispute must be resolved to determine whether the claim succeeds that there is ‘no reasonable prospect of success’;
(g) it ought not be used to shut out proceedings where, on a proposition of law, there may be room for doubt. On questions of law, an inquiry as to their merit should not be for the purpose of resolving them and also not simply to determine whether the argument is hopeless, but in order to decide if it is sufficiently strong to warrant a trial;
(h) evidence of an ambivalent character will usually be sufficient to amount to reasonable prospects;
(i) in determining if there are real issues of fact in issue so as to preclude summary judgment the courts must draw all reasonable inferences in favour of the non-moving party.
See Genovese v BGC Construction Pty Ltd [2007] FCA 923 at [5]; Boston Commercial Services Pty Ltd v GE Capital Finance Australasia Pty Ltd (2006) 70 IPR 146 at [42]-[48]; Hicks v Ruddock (2007) 156 FCR 574 at [13]; Bond v Barry (2007) 73 IPR 490 at [46]; Commonwealth Bank of Australia v ACN 000 247 601 Pty Ltd (in Liq) (formerly Stanley Thompson Valuers Pty Ltd) [2006] FCA 1416 at [30]; Fortron Automotive Treatments Pty Ltd v Jones (No 2) [2006] FCA 1401 at [21]; Jefferson Ford Pty Ltd v Ford Motor Company of Australia Limited [2008] FCAFC 60.
(Emphasis in original.)
501 Upaid submits that the evidence before the Court demonstrates that there are real issues to be tried on infringement, both as to claim construction and as to how Telstra’s systems operate. It submits that the procedural limitations associated with a summary dismissal application reinforce the conclusion that it cannot fairly be found that these issues will ultimately be resolved in Telstra’s favour.
Telstra’s submissions
502 Telstra submits that the case that Upaid has particularised in respect of the infringement of claim 1 of the 853 patent and claim 1 of the 646 patent is unsupportable and that Upaid has conceded as much. Telstra submits that a finding in its favour on this point is sufficient to dispose of its application for summary dismissal. Telstra also submits that the different case which Upaid has advanced in submissions is based on untenable allegations. I pause here to note that, in the analysis I have undertaken above, I have endeavoured to identify the principal points of Upaid’s departure from its particularised case and whether, in the case of either claim 1 of the 853 patent or claim 1 of the 646 patent, the case advanced by Upaid in submissions is tenable. In this connection, it notes that Upaid has advanced no alternative set of particulars. Telstra further submits that, contrary to Upaid’s position, the Court should not exercise its discretion to permit Upaid a yet further opportunity to amend its particulars, for the following reasons.
503 First, Telstra submits that Upaid has been given a number of opportunities to properly plead a case of infringement. Telstra refers to the history of the proceeding since its commencement on 21 August 2013, particularly the striking out of Upaid’s amended particulars on 23 December 2013 (Upaid No 1) and the events of 2014 in which the parties engaged in an extensive exchange of correspondence on the adequacy of the various iterations of what finally came to be the particulars, the subject of the present application. Telstra argues that Upaid failed to undertake the detailed work necessary to explain how Telstra’s conduct engaged with the features of the claims. Telstra argues that it has been forced to lead Upaid through this exercise by way of voluminous commentary and requests for further and better particulars. Telstra submits that Upaid has had more than an ample opportunity to formulate its particulars and that it (Telstra) should not be required to bear the burden of further attempts by Upaid to properly advance a case on infringement.
504 Secondly, Telstra submits that, having regard to the broad allegations of infringement, the number of claims alleged to have been infringed, and the paucity of the particulars originally given, Upaid’s claim, as originally commenced, is property characterised as an ambit claim that is speculative in nature. Telstra submits that, having regard to the lack of support for the case has now particularised—despite various iterations of its particulars up to the present time—and the failure by Upaid to identify an evidentiary basis on which its particularised case is advanced, Upaid’s persistence in the proceeding to date should also be regarded as speculative.
505 Thirdly, and relatedly, Telstra submits that the present application has been conducted on the basis that the particulars represent Upaid’s final and considered position. The utility of dealing with a strike out/summary dismissal application for an exemplified claim in respect of each patent was intended to lead to a position which would be informative of a likely outcome in relation to the balance of the proceeding. Telstra submits that, consistently with that approach, orders for discovery and interrogatories were made on Upaid’s application. Telstra says that these measures were not undertaken on the basis that Upaid might then seek to make further amendments to its particulars. These steps were taken to provide evidentiary support for the case that Upaid had particularised.
506 In this connection, Telstra directs attention to the observations I made in Upaid No 2 where I said (at [14]):
14 The present application for discovery is not made in the context of the trial of the action or of the determination of a separate question. It is sought by Upaid to assist it in resisting Telstra's application for summary dismissal – in other words, to assist Upaid to positively demonstrate that it has a case that has sufficient prospects of being successfully prosecuted. One might have thought that such a case could be demonstrated without the need for any extensive discovery or, indeed, for discovery at all. As I remarked at the directions hearing on 3 November 2014, one would think that the role for discovery in the present circumstances must be limited.
507 I should also refer to the additional observations I made at [15]-[16] of those reasons:
15 As a general rule, the Court will not grant an application for discovery where to do so would permit “fishing” in the sense explained in Associated Dominions Assurance Society Pty Ltd v John Fairfax & Sons Pty Ltd (1952) 72 WN (NSW) 250 at 254; see also in this regard the observations of Lockhart J in W A Pines Pty Ltd v Bannerman (1980) 30 ALR 559 at 574-576. Thus, the Court will not order discovery simply to allow a party to “fish” for evidence to support a claim or a defence which is, essentially, speculative in nature.
16 It is also noteworthy that Upaid has not relied on evidence specifically directed to supporting the discovery it seeks. Thus, where there is a contest between the parties, particularly as to the scope of the documents sought, Upaid has relied, substantially, on argument, not evidence, to seek to persuade the Court that the discovery it wants should be granted.
508 With regard to Upaid’s reliance on Spencer, Telstra seeks to distinguish the facts and circumstances of the present case. In Spencer, it was found that the case was not appropriate for summary dismissal pursuant to s 31A of the Act. There, the case which the applicant sought to raise involved important question of public and constitutional law. It also raised questions of fact about the existence of an arrangement between the Commonwealth and the State of New South Wales which might justify the invocation of pre-trial processes, such as discovery and interrogatories. Telstra submits that the present case does not have features of that kind. Further, the present case has a different procedural history in which discovery and interrogatories in aid of Upaid’s particularised case have been given.
509 The context in which the present application arises is important.
510 At the time that Upaid sought leave on 3 November 2014 to file the particulars, I have no doubt that it advanced them as its considered case on infringement of the 853 patent and the 646 patent, based on many months of debate in correspondence with Telstra. It was on this basis that I considered it to be expedient to grant leave to Upaid to file the particulars, without further debate at that time, so that Telstra’s application for summary dismissal and/or to strike out the particulars could proceed on what I thought to be the most appropriate framework for deciding those questions. I was satisfied that there was utility in that course. I believed that, by proceeding in this manner, it was likely that the position would be reached where it could be determined, one way or the other, whether Upaid had a tenable case for infringement, at least in respect of claim 1 of each patent. I believed that my conclusions in respect of claim 1 of each patent might well decide the fate of Upaid’s case on infringement in respect of a number of other claims it had pleaded.
511 Another important aspect of the context in which the present application arises is that, in Upaid No 1, I had previously considered Upaid’s particulars (then relied upon) to be inadequate and struck them out. The present application is, therefore, not the first occasion on which the Court has been called upon to determine the adequacy of the case advanced by Upaid. Indeed, at that time, Telstra sought an order that, because of the inadequate particularisation of Upaid’s case, the statement of claim should be struck out. I was not persuaded that such a course was appropriate at that time, and granted leave to Upaid to provide further amended particulars. This decision led to the lengthy debate between the parties to which I have referred.
512 In Upaid No 1 I discussed, in considerable detail, the requirements of pleading a case of patent infringement, and the importance of the requirement for proper particulars to the orderly conduct of litigation of this kind. Those considerations are particularly important here because Upaid’s claims of infringement are extensive, as evidenced by the fact that the particulars are now 171 pages in length. Patent litigation of this kind can only be conducted sensibly upon proper particularisation of the patentee’s case. To proceed to a trial otherwise would not only result in unfairness to the opposing party, but would be quite unmanageable and place enormous burdens on the Court so far as reaching a just and correct decision on the case. Indeed, as I explained in Upaid No 1 at [27], proper particularisation is important not only for defining the scope of the case for ultimate decision, but also the scope of the case for the purpose of the interlocutory steps to be taken to bring the proceeding to a state of readiness for hearing.
513 Proceeding on the basis that the particulars reflected Upaid’s considered case on infringement, and recognising the importance of the present application for both parties, I acceded to Upaid’s application for discovery and interrogatories. This occurred after a contested application, leading to the judgment in Upaid No 2. As my reasons in Upaid No 2 make clear, I would not have permitted these steps to have occurred had I considered them to be a “fishing exercise”. These steps were permitted to assist Upaid to support its particularised case, even though, at that stage, Upaid had adduced no evidence to support the discovery it had sought: Upaid No 2 at [15]-[16], quoted at [506]-[507] above.
514 With those matters of context in mind, it is somewhat surprising (to say the least) that, on the hearing of the present application, Upaid either abandoned or departed from its particularised case in a number of fundamental respects.
515 My conclusions in respect of Upaid’s particularised case regarding infringement of claim 1 of the 853 patent, as summarised at [483]-[489] above, lead me to further conclude that the particulars in para 1 (and all related subparagraphs) should be struck out. Although I have indicated that, in some respects, certain defects and deficiencies in the particulars might be overcome by further amendment, there are fundamental aspects of the particularised case for each alleged type of infringement which render Upaid’s case untenable as an infringement of claim 1 of the 853 patent. I am satisfied that Upaid has no reasonable prospect of successfully prosecuting its particularised case concerning the infringement of claim 1 of the 853 patent. Further, where, in submissions, Upaid has advanced what is, in reality, a substitute case for its particularised case, I am satisfied, for the reasons I have given, that Upaid has no reasonable prospect of successfully prosecuting that alternative case.
516 I conclude, therefore, that Upaid’s case for infringement of claim 1 of the 853 patent should also be dismissed under s 31A of the Act and r 26.01 of the Rules.
517 My conclusions in respect of Upaid’s particularised case regarding infringement of claim 1 of the 646 patent, as summarised at [490]-[495] above, lead me to further conclude that the particulars in para 19 (and all related subparagraphs) should be struck out. However, I have not reached a level of satisfaction that Upaid has no reasonable prospect of successfully prosecuting that part of the proceeding that relates to the alleged infringement of that claim. I have indicated that a number of the objections made by Telstra are capable of being overcome by amendment. Some aspects of Upaid’s particularised case are not tenable as infringements of claim 1 of the 646 patent, but it is possible—I say no more than that—that Upaid might be able to particularise a tenable case on infringement taking into account my findings and conclusions in relation to its case as presently particularised.
518 In coming to this conclusion I am conscious of the fact that, despite the opportunities already provided to it, Upaid has failed, since the commencement of the proceeding and over a considerable period of time, to properly formulate a case on infringement of this claim. I am also conscious of the fact that Telstra has been put to considerable trouble and expense as a consequence. Nevertheless, on balance, I think that, in light of the particular findings I have made, and at this stage of the proceeding, Upaid should be given a further, albeit limited, opportunity to consider its position in this regard.
519 I will order that paragraph 1 (and all related subparagraphs) and paragraph 19 (and all related subparagraphs) of the particulars be struck out and that Upaid’s case for infringement of claim 1 of the 853 patent be dismissed under s 31A of the Act and r 26.01 of the Rules.
520 Telstra has provided written submissions on the question of costs. At the time of the hearing, Upaid had not responded to those submissions. It seeks the opportunity to do so. I will, therefore, reserve the question of costs for later determination.
521 I will stand over the proceeding for approximately six weeks to enable the parties to consider these reasons, with a view to them seeking to come to an agreement as to the consequences that my findings and conclusions have for the fate of the other allegations of infringement of the 853 patent and the 646 patent that have been pleaded. I will list the proceeding for directions only at 9.30 am on 26 April 2016. If the parties have reached agreement as to the further orders that should be made in that regard, then I will make the orders at that time.
522 At that time, Upaid must also be in a position to indicate to the Court whether it wishes to avail itself of the opportunity to seek further leave to amend its particulars of infringement of claim 1 of the 646 patent. If so, I will make directions for that purpose. If not, I will dismiss its case for infringement of that claim.
523 As to reserved costs, it may be that Telstra wishes to supplement the submissions it has already made. I will give it that opportunity. However, the submissions must be in a consolidated form. Telstra is to file and serve any consolidated submissions on the question of costs by 4.00 pm on 24 March 2016. Upaid is to file and serve its answering submissions by 4.00 pm on 14 April 2016. Telstra is to file and serve its submissions in reply, if any, by 4.00 pm on 21 April 2016.
524 Telstra has made certain claims for confidentiality in respect of certain affidavits or parts of affidavits filed and read in support of its interlocutory application. That question has been argued but not yet determined. An interim order has been made. I will order, pursuant to s 37AF(1) of the Act, that, until that question is determined, the sub-headings below the headings “Pay with my Telstra mobile—pre-paid” and “Pay with my Telstra mobile—post-paid”; paras [47]-[48]; the last three sentences of para [50]; the last three sentences of para [52]; the third, fourth and fifth sentences and the last four words of para [56], and its immediate heading; paras [57]-[64] and their immediate headings; the second sentence of para [65]; the third to sixth sentences of para [70]; the first sentence of para [71]; the fifth, sixth and ninth to twelfth sentences and the last three words of the eighth sentence of para [74]; the fourth and seventh to tenth sentences and the last three words of the sixth sentence of para [75]; the last two sentences of para [79]; the last sentence of para [236] and para [238] of these reasons not be published and not be disclosed to any person other than in accordance with Order 1 made on 6 November 2015. This order is necessary to prevent prejudice to the proper administration of justice.
I certify that the preceding five hundred and twenty-four (524) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. |
