FEDERAL COURT OF AUSTRALIA

Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2020] FCA 408

ORDERS

THE COURT ORDERS THAT:

1.    The parties provide short minutes of order to chambers as to the appropriate form of orders and costs, with any areas of disagreement marked up, by 27 April 2020.

2.    In the event of disagreement, the matter be listed for a case management hearing at 9.30am on 15 May 2020.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BURLEY J:

1.    INTRODUCTION

1    In Australia’s congested urban areas the competition for public parking spaces is intense. It is the responsibility of local councils to regulate it. For many years this has been done by imposing time and zone restrictions, such that vehicles may park for a limited duration, or not at all, in various zones. Monitoring vehicle non-compliance has been a time-consuming and costly exercise. Traditionally, council parking officers manually checked vehicles, marking tyres with chalk and issuing handwritten infringement notices in the event that they were in breach. The mid-2000s brought changes to the industry. One was introduced by the present appellant, Vehicle Monitoring Systems Pty Ltd (VMS). It developed a system using in-ground sensors to detect changes in the earth’s magnetic field when a vehicle entered a parking space (or bay). A message could be sent wirelessly to a device carried by a parking officer who could then issue a ticket. The system was dubbed the Parking Overstay Detection System or the POD system by its inventor, Fraser Welch. It was the subject of patent applications and first trialled by the Maribyrnong City Council in Melbourne from 2005. Another was the use of handheld personal digital assistants (PDAs) for issuing tickets.

2    During the course of 2005 VMS sought to collaborate with the respondent, SARB Management Group Pty Ltd, to advance the POD system technology. SARB is the designer and distributor of PinForce, which was software popularly used for issuing parking infringement notices (or PINs) by council officers. It operated on generic handheld PDAs. Discussions between Sandy Del Papa from SARB and Mr Welch took place in 2005 and 2006 but no collaboration eventuated. Instead, SARB developed its own vehicle detection system which was also based on the use of a sensor to detect changes in the earth’s magnetic field when a vehicle enters a parking space.

3    Perhaps unsurprisingly, since then SARB and VMS have become antagonists, both in the marketplace and in this Court. VMS has sued SARB for patent infringement and opposed its patent applications. SARB in its turn, has opposed the grant to VMS of patent applications and contested the validity of VMS’s patents. The present case is the next round of disputation.

4    VMS opposes, pursuant to s 59 of the Patents Act 1990 (Cth), the grant to SARB of Australian Patent Application No. 2013213708, which is entitled ‘Vehicle Detection’ (SARB application). The priority date of the SARB Application is 23 August 2007.

5    An opposition hearing (opposition proceedings) was conducted before a delegate of the Commissioner of Patents where VMS advanced three grounds: (a) that the SARB application lacks an inventive step; (b) that SARB is not entitled to the grant of the patent; and (c) that the claims do not comply with ss 40(2) and (3) of the Patents Act. The delegate rejected each of these grounds, but found that claims 25 – 28 of the SARB application should not proceed to grant because they contravene s 40(3A) of the Patents Act: Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2017] APO 63; 133 IPR 352 at [8], [100] – [103].

6    VMS now appeals from the delegate’s decision pursuant to s 60(4) of the Patents Act. Such an appeal is determined as a hearing de novo by the Court, being the first judicial consideration of this particular dispute between the parties: New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213; 141 FCR 1 at [44] (Kiefel, Allsop JJ, as their Honours then were, and Crennan J).

7    This appeal, as before the delegate, is governed by the Patents Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). One consequence is that the Commissioner, and this Court, is to determine whether the grounds of opposition pressed have been established by VMS on the balance of probabilities: s 60(3A) of the Patents Act.

8    The parties co-operated to ensure that the many issues and sub-issues raised were corralled into a manageable form for which they are to be congratulated. In summary, the three grounds of opposition advanced by VMS in its Further Amended Notice of Appeal are as follows.

9    First, that claims 1 – 24 lack an inventive step in the light of the common general knowledge and each of the following sources of prior art information:

(1)    International Patent Application No. WO2005/111963 filed by VMS in which Mr Welch is the named inventor (PCT application);

(2)    an article published in June 2005 in the Australian National Parking Steering Group (ANPSG) Journal entitled ‘PODS – the Next Big Thing’ (PODS article);

(3)    the slides of a presentation about the POD system given by Tom Gladwin at the ANPSG Perth Conference on 18 November 2005 (Gladwin PowerPoint);

(4)    a presentation about the POD system given by Mr Welch at the ANPSG conference in November 2006 (Welch presentation); and

(5)    Australian Patent No. 2006235864 owned by Meter Eye IP Limited published on 24 May 2007 (Collins patent).

10    In its closing submissions, VMS confined its obviousness case to the contention that the invention claimed lacks an inventive step having regard to the common general knowledge, in combination with: (a) the PCT application; or (b) the PCT application together with the PODS article, the Gladwin PowerPoint and/or the Welch presentation; or (c) the Collins patent. For the reasons set out below in section 6, I conclude that this ground has not been established.

11    Secondly, VMS contends that SARB is not entitled to be the person to whom the patent is granted because Mr Welch or alternatively Mr Welch and Mr Gladwin conceived of all or part of the invention disclosed in the SARB application and communicated it to Mr Del Papa, and in doing so sufficiently contributed to the invention so as to be inventors. In the alternative, VMS submits that Mr Welch and Mr Gladwin are entitled to joint inventorship with the currently named inventors. I have concluded in section 7.4 below that VMS has not established this ground. SARB has advanced a Notice of Contention in which it contends that Mr Welch and/or Mr Gladwin were necessarily excluded from being entitled to be named as inventors because Mr Welch publicly disclosed or consented to the disclosure of their alleged contribution to the inventive concept. However, in light of my findings it has not been necessary to address this point.

12    Thirdly, VMS contends that the invention claimed is not patentable because it does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, in breach of s 40(2)(a) of the Patents Act. I have concluded in section 8 below that this ground has not been made out.

13    The delegate determined that claims 1 – 24 may proceed to grant, but that claims 25 – 28 should not. SARB has lodged no cross-appeal, nor advanced any contention to challenge the finding on claims 25 – 28, or otherwise to support the validity of those claims. Having regard to my findings, it appears that the appropriate orders are that the appeal be dismissed, that VMS pay the costs of the appeal, and that claims 1 – 24 of the SARB application proceed to grant. However, I have heard no submissions on the form orders and accordingly I will put in place a timetable for submissions to be made.

2.    THE WITNESSES

2.1    Introduction

14    Most of the witnesses were cross-examined. Except where otherwise noted, I find that each did his best to assist the Court, and each was subject to the usual difficulties involved in cases such as the present in attempting to recall events that took place, and the knowledge that they had, many years in the past.

2.2    VMS

15    Mr Welch is the executive director of VMS. He established Focus International Pty Ltd in 1993 as a business involved in the design and manufacture of parking meters and paid parking ticket machines for local councils. A client of Focus in the late 1990s was the Maribyrnong City Council and Mr Gladwin was the Manager of Parking there. Following discussions with Mr Gladwin about how parking enforcement efficiency could be improved, Mr Welch began designing the POD system, and in December 2003 Mr Welch incorporated VMS for the purpose of developing and commercialising the POD system. VMS has subsequently obtained the grant of patents in relation to the technology so developed. Mr Welch gives evidence that during the course of 2005 and 2006 he had various oral and written exchanges with Mr Del Papa of SARB about commercial terms upon which the companies might work together, including the development of a ticketing system that integrated the POD system with SARB’s ticketing issuing software and PDAs. He also gives evidence about the ANPSG (an industry association for members of the parking enforcement industry) conferences in Perth in November 2005 and in Hobart in November 2006, where the Gladwin PowerPoint and Welch presentations were respectively given, as well as evidence about the collaboration between VMS and Schweers Informationstechnologie GmbH during and after the Hobart conference. VMS relies on: two affidavits sworn by Mr Welch in these proceedings; one affidavit sworn by on 14 April 2014 in proceedings between the same parties (VID 318 of 2012); and a statutory declaration in the opposition proceedings before the delegate. He was cross-examined.

16    Mr Gladwin was the Manager of Parking and Local Laws at Maribyrnong City Council between May 1996 and October 2011. Since January 2013 he has been the Local Laws Supervisor at Boroondara Council in the inner-eastern suburbs of Melbourne. He gives evidence about events relating to the development of the POD system with Mr Welch, the Gladwin PowerPoint and aspects of the POD system in operation. VMS relies on one affidavit sworn by Mr Gladwin in proceedings VID 318 of 2012 on 14 April 2014 and three affidavits sworn in these proceedings. He was cross-examined.

17    Larry Schneider is the Principal Technology Leader, Future Transport Infrastructure, at Australian Road Research Board Group Limited (ARRB), which is a provider of advisory and consultancy services to road agencies and public and private organisations including local councils and state governments. He has expertise in the methods and equipment that have been used in public parking compliance in Australia since before the priority date, and has over 32 years of experience in the parking industry in Australia, New Zealand and South Africa. He holds a Bachelor of Commerce (University of Natal), a Bachelor of Arts (University of South Africa) and a Bachelor of Laws (University of Rhodesia). From 1992 until March 2003 he was an Executive Director of Wilson Parking Australia 1992 Pty Ltd, a parking services and equipment company. Since January 2004 he has provided advisory and consultancy services in parking management, operations, planning and technology for ARRB. In his 6 June 2018 affidavit he refers to the large number of projects that he has been involved in and speaks of technology trends in public parking. VMS relies upon three affidavits affirmed by Mr Schneider in these proceedings and a statutory declaration given by him in opposition proceedings brought by SARB against a patent application lodged by VMS. He was cross-examined.

18    Craig Ion has been employed by Maribyrnong City Council since 2005, first as a parking officer and now as the coordinator of parking, animal management and local laws. He gives evidence about the state of parking enforcement as at the priority date and his use of and interest in the POD system before that time. He affirmed two affidavits and was cross-examined.

19    Darrin James Wilson is an engineering consultant and contractor engaged in electronic design and manufacturing. He was awarded a Bachelor of Electronic Engineering from the Royal Melbourne Institute of Technology in 1991. Mr Wilson was employed as a Design Engineer from 1993 until 2006 with Setec Pty Ltd, a designer and manufacturer of power solutions in the automotive, communications, medical, scientific and other, industries. From 2001 until 2006 Mr Wilson held the roles of Senior Design Engineer and Deputy Research and Development Manager with Setec and was responsible for managing the hardware design and software development for a power system monitor and controller for a telecommunications exchange. Between 2006 and 2008 Mr Wilson was the Technical Solutions Manager at Future Electronics, which sold electronic components. In this role he attended meetings with potential clients to discuss projects they were working on, provided technical information about the products available and in some cases provided technical and design solutions as well as componentry for their projects. Mr Wilson affirmed four affidavits, and participated in the preparation of a Joint Expert Report and the provision of concurrent evidence with Professor Evans during the course of which he was cross-examined.

2.3    SARB

20    Mr Del Papa is a project director at SARB and a named inventor in the SARB application. He was awarded a Bachelor of Science from the School of Mathematical and Information Sciences at La Trobe University in 1990 and has experience working as a software programmer and a software systems analyst. He joined SARB in about March 2000, initially as an e-Solutions Manager, and in 2003 he became a director of the company. He is currently responsible for managing the commercial aspects of the civic compliance arm of SARB’s business. Mr Del Papa gives evidence about the state of the art of parking enforcement systems as at the priority date, his role in the development of the invention and his response to the Welch and Gladwin evidence concerning inventorship. SARB relies on one affidavit affirmed by Mr Del Papa in these proceedings and a statutory declaration declared by him in the opposition proceedings. He was cross-examined.

21    Mark Alan Richardson has since March 2003 been the Manager of Ranger and Parking Services for North Sydney Council in Sydney. He worked as a patrol team leader for the NRMA from 1998 to 2003, and before that he spent about 19 years working for New South Wales State Rail. He holds a Bachelor of Management from the University of Newcastle. In 2004, 2007 and 2010 Mr Richardson sat on New South Wales government evaluation panels to determine which providers were to be included in the State Government Contract for electronic parking infringement management systems for the following three years. Mr Richardson gives evidence about the transition in New South Wales to the use of electronic parking infringement notices (or PINs), the methods of parking enforcement used prior to the priority date, the use of sensors in parking enforcement prior to that date, the current methods of parking enforcement and the role of ANPSG. He was cross-examined.

22    Jamie Scott Evans is a professor in the Department of Electrical and Electronic Engineering at the University of Melbourne and the Deputy Dean (Academic) in the Melbourne School of Engineering. In 1993 he was awarded a Bachelor of Science in Physics and in 1994 he was awarded a Bachelor of Engineering in Computer Engineering by the University of Newcastle. In 1998 he was awarded a PhD in Electrical Engineering by the University of Melbourne. During 1998 and 1999, as a Postdoctoral Fellow at the University of California, Berkeley, Professor Evans conducted research focussed on wireless networks and signal processing to optimise network performance. From June 1999 until July 2001 he was a lecturer at the University of Sydney and continued research into network systems. He was then appointed to various academic positions at the University of Melbourne between 2001 and 2012, before moving to Monash University, and then back to the University of Melbourne to his present position in February 2016. From 2003 until 2010 he conducted research and study into the fields of wireless networking and signal processing. Professor Evans gives evidence about wireless sensor networks and their function prior to priority date, his understanding of the SARB application and the prior art documents relied upon by VMS. He also responds to the written evidence of Mr Wilson. Professor Evans participated in the preparation of a Joint Expert Report with Mr Wilson, gave concurrent evidence with him, and was cross-examined.

3.    THE SARB APPLICATION

3.1    The approach to be taken to the construction of the specification

23    Many leading authorities have set out the principles relevant to the construction of patents and patent applications and there was no dispute in the present case as to the general requirements imposed by those principles. The end point is that the words in a claim should be read through the eyes of the person skilled in the art in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to the common general knowledge and to what is disclosed in the body of the specification. The same applies to the words used in the claims. The construction of a specification, including the claims, is ultimately a matter for the Court. While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole. However, it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification. That said (and to the endless entertainment of patent lawyers), terms in claims which are unclear may be defined or clarified by reference to the body of the specification, such that language of claims that may have no positive meaning when read apart from the specification may become clear, and the invention sufficiently defined when read using the body of the specification as a dictionary of the jargon and ascertaining the nature of the invention. See generally: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; 106 CLR 588 at 610, 616; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8; 207 CLR 1 at [15]; H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 177 FCR 151 (Bennett J, with whom Middleton J agreed) at [118] – [120].

24    In the present case the person skilled in the art is someone with a practical interest in devices used for the automated enforcement of vehicle parking compliance requirements. There is no dispute that such persons may consist of a team, or that in the present case the team will include: (a) an electrical or electronics engineer familiar with sensing devices, radio frequency communications and the communication of data; and (b) a person or persons with a practical interest in and, knowledge of, parking practices, equipment and technology. I refer to these persons collectively as the skilled team. Mr Wilson and Professor Evans, as engineers, fall within the first part of the team and one or more of Mr Richardson, Mr Schneider, Mr Gladwin and Mr Ion fall within the latter part.

25    When it comes to construing the SARB application and the prior art documents in the proceedings, their meaning is ascertained having regard to normal English grammar, syntax and meaning, albeit in a context involving some technical subject matter.

3.2    The specification

26    The specification describes the technical field of the invention as relating to vehicle parking compliance and in particular to the automated determination of notifiable parking events.

27    The ‘Background of the Invention’ describes vehicular parking as usually being subjected to rules and regulations such as absolute prohibitions in areas in which no parking is permitted, conditional prohibitions such as permit-only parking, and time-limited parking regulations, which may be free or metered or ticketed. It says that the enforcement of parking regulations can be costly and time-consuming for the private or public agencies responsible. It says (page 1 lines 21 – 34):

…Typical enforcement involves a parking inspector manually inspecting all of the restricted spaces periodically, regardless of whether vehicles are actually present. Further, to identify a violation in a free time-limited zone requires that the parking inspector inspect the violating car at least twice, once to establish a time of arrival of the car (for example by chalking the tire of the car), and a second time once the permitted time period for parking has elapsed. Even in paid metered zones, such manual enforcement is inefficient as the parking inspector may fail to note an expired meter or ticket before the violating car departs, reducing the deterrent to infringers and denying fines revenue to the relevant body. It has been estimated that only 1 in 25 parking violations are identified by manual enforcement. Enforcement is made even more difficult when the spaces are distributed over a large area, such as a city block or a large, multi-level parking garage. Manual enforcement is also unable to provide historical data of parking usage, and such data is becoming of increasing importance to the implementation of parking supply and regulation.

28    The ‘Summary of the Invention’ provides a series of statements setting out what the patentee contends is the invention. The first, which is a consistory statement for claim 1, says (page 2 lines 14 – 26):

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

29    It is this aspect of the invention that attracts the most attention in the submissions of both parties. It will be seen that the vehicle detection unit (also referred to as a VDU) includes three operational elements, first a magnetic sensor, secondly a storage device and thirdly a processor. The sensor is suitable for detecting the presence of a vehicle in a parking bay, and the storage device has within it details of the permissible parking conditions. The processor checks the sensor signal against the permissible parking conditions and, if a notifiable event (such as a parking violation, an imminent parking violation or other event of interest such as a change in occupancy status) has occurred, the processor initiates a communication from the VDU to a ‘supervisory device’ that is located remotely to the VDU. The communication includes data items concerning the notifiable event which are communicated ‘in a format suitable for pre-population into infringement issuing software’.

30    The second aspect of the invention, which is a consistory statement for claim 11, is a method for vehicle detection involving the use of a VDU with the characteristics described in the first aspect.

31    The specification then states that the invention provides for the VDU to determine whether a notifiable event has occurred. It then describes some preferred embodiments. In one it is said that the VDU communicates wirelessly directly with a portable supervisory device, such as a PDA carried by an inspector, in an ad hoc manner at times when a notifiable event has occurred and when the portable supervisory device is in range. Such a network topology is referred to as a ‘transient middle tier’ (or TMT) which obviates the need for fixed communications infrastructure to connect each VDU with a head officer server, and that server to in turn communicate with a supervisory device. The fixed infrastructure is referred to in the specification as a ‘fixed middle tier’ (or FMT).

32    In further preferred embodiments, the VDU is said to be operable to provide information associated with the notifiable event to the supervisory device so that information may be pre-populated into the supervisory device without requiring manual entry of the information by the parking inspector.

33    The specification then says (emphasis added) (page 3 line 29 to page 4 line 2):

Preferably, a plurality of vehicle detection units in accordance with the first aspect of the present invention communicate with a single supervisory device such as a PDA carried by a parking inspector. The single supervisory device may thus be provided with real time reporting of the occupancy status of each of a plurality of parking spaces, including information such as the presence or absence of a vehicle in each location, a duration of occupancy of each vehicle present, a violation status of each vehicle present such as no violation, violation imminent and in violation. Notably, due to the ability of each vehicle detection unit to determine whether notifiable events are occurring, the supervisory device is not required to possess the substantial processing power needed to make such determinations for every such vehicle detection unit.

34    In preferred embodiments of the invention, the VDU is embedded in the roadway beneath the associated parking space. The sensor of the VDU is said to be preferably a magnetometer able to sense variations in magnetic field caused by the arrival or departure of a vehicle. In such embodiments the VDU is operable to receive updates (preferably wirelessly) to the parameters defining notifiable events, such as when the signage associated with the parking space is altered.

35    The third aspect of the invention described, which is a consistory statement for claim 20, is a method of issuing a PIN including the use of a portable device establishing a transient wireless connection with at least one VDU. A preferred form of this method is said to involve the automated pre-population of the data arising from the notifiable parking event into infringement issuing software of the portable device.

36    The fourth aspect of the invention described, which is a consistory statement for claim 21, is a system for detecting parking infringements, where a mobile supervisory device may be a portable digital device carried by a parking inspector or mounted on a vehicle, which preferably collates data from a plurality of VDUs for simultaneous display to a parking officer.

37    The specification then describes various preferred embodiments by reference to 8 drawings. Figure 1 (set out below) illustrates a network topology comprising a TMT, which is described in a glossary of terms as the conduit between a handheld device (HHD) and a VDU embedded in the ground containing a processor, a magnetic sensor and a communications module. Figure 2 (not shown) also illustrates a network topology but with a FMT as an alternative to a transient middle tier. It provides the conduit between the VDU and a ‘vehicle detection system internet gateway’ which is ‘fixed’ because it is permanently in place in the field. It may comprise wireless network nodes attached to a parking meter or light poles or the like.

38    The description of the TMT of figure 1 provides that each VDU 110 is battery-powered and embedded in the ground, and is able to detect the arrival and departure of a vehicle 120 by way of a three-axis magnetic sensor. This reads the magnetic field at sufficiently regular intervals to detect a magnetic field disturbance created by a vehicle travelling at 20 kilometres per hour or less. Each reading taken outside prescribed thresholds is passed to the ‘vehicle detection algorithm’ (VDA) for determination of the presence of a vehicle. The three-axis sensor takes readings in the X, Y and Z axes. The VDA is run in the firmware of the VDU 110. Upon the determination of the arrival of a vehicle 120 by the VDA, the VDU 110 determines when the vehicle violates parking restrictions. This is done by a ‘vehicle in violation algorithm’ (VIVA) which is run in the firmware of the VDU.

39    The steps next described in the specification were the subject of submissions and warrant quotation (emphasis added):

Upon determination of an actual or impending infringement, the VIVA initiates communications from the VDU 110 to the TMT 132, to alert the parking officer 120 of the infringement. This is effected by an RF [i.e. radio frequency] communications component of the VDU 110. The RF communications component of the VDU 110 “listens when required” for the broadcast beacon from the TMT 132, and organises communications.

Each VDU 110 has onboard memory storage to store Parking Events, enabling the VDU 110 to upload data for pre-population into the HHD 134 as required. Such data includes infringement data, parking event data, system health status, offence type (eg no standing), location details (physical), parking restrictions (eg signage), offence details such as arrival time and departure time, offence notes such as arrival time and time overstayed, and firmware details. Once the Parking Event data has been transferred, it is removed from the VDU 110. Further, the HHD 134 issues a confirmation message indicating that an infringement has been issued, which is received by the VDU 110 and causes the VDA to be reset.

As it is unlikely to be economic to replace the battery and/or VDU 110, each VDU 110 is configured to be highly power efficient on the basis that once the battery has been exhausted the life of the VDU will be over. One measure to provide for longevity is that each VDU 110 is operable to download updated firmware and firmware parameters (such as changed parking restrictions), as required.

40    The specification notes that while using the TMT described by reference to Figure 1 is preferable, the invention includes within its scope FMT topologies communicating with VDUs.

41    Figure 2 illustrates a system with a FMT topology and also a TMT. The specification explains that each VDU 110, is embedded about 2 centimetres below the surface of the parking space and can typically communicate with a TMT or FMT that is 20 metres away. It says (page 12 lines 19 – 24):

To conserve battery power, each VDU 110, 210 only attempts to detect the presence of the beacon signal of the TMT 132 and/or FMT 240 at times when communication is required, such occasions include when the VIVA indicates a vehicle is in violation, when the predefined Parking Event storage limits have been met, when the system is in a “maintenance required” state, and when listening for a routine maintenance request.

42     A VDA is set out in figure 4 (not shown). This may be updated remotely via a radio frequency link. Any object that creates a disturbance to the magnetic field far greater than that created by a vehicle (such as a powerful magnet within the vicinity of the sensor) is to be treated as an exception, as well as other circumstances likely to be recorded as false positives. The VDA operates in conjunction with the VIVA which operates on multiple time-based triggers to determine whether a parking violation has occurred.

43    The specification then describes some case examples relevant to the operation of the algorithms for detecting vehicles and parking violations.

44    Figure 5 then illustrates a generalised network topology of a further embodiment of the invention as follows:

45    In figure 5, the back-end system 1 provides for configuration, processing and storing of data, in particular for the entry of street names and for the identification and recording of the location of each VDU. It also provides back-end processing of all PINs and stores all signage information to be able to determine if a vehicle has committed an offence. The middle tier 2 is between, and communicates with, the VDUs 4, which are located in the ground, and the back-end system 1 and/or the handheld device 3. The specification provides (emphasis added) (at page 19 lines 27 to page 20 line 2):

The hand held device (HHD) 3 is carried by a parking officer, and receives communications regarding the details of an infringement (or pending infringement) and is provided with “pre populated” details which are automatically passed into the PINS for processing by the officer. The data fields provided for automated pre-population include Offence Type, Offence Date and Time, Offence Location (e.g. Street No, Street Name, Suburb), Parking Bay Identifier, Vehicle Arrival Time, Vehicle Stay Duration. Location Information...Parking Sign Information... Parking Restriction and Officer Notes. Such communications could arrive from the back-end system 1, from a middle tier 2 separate to the HHD, or directly from the VDUs 4.

46    The meaning of ‘pre-population’ adopts some significance in the proceedings. It will be seen from the above passage that communications that arrive from the VDUs contain details of an infringement which are automatically ‘passed into the PINs for processing by the officer’. The data fields providing for such population include details of the offence, such as time and location.

47    The specification continues (at page 20 lines 5 – 11):

The Vehicle Detection Units (VDUs) 4 are placed into the ground beneath each vehicle parking space. The readings taken by a sensor of each unit are used by the vehicle detection algorithm (VDA) run by the VDU to determine the presence of a vehicle. Depending on the end architecture and design, each VDU 4 may be required to send a signal identifying itself, send a signal defining the magnetic field reading, send a signal defining the presence of a vehicle over the detector, send a signal defining the history of vehicle movements within the bay, and/or be able to download new firmware as required.

48    In the embodiment described by reference to figure 7 (not shown), the specification refers to an ‘intelligent’ VDU which stores each reading, taken over a period of time. It determines if a vehicle has infringed by referring to signage details of the bay stored by the VDU, such as date and time details, and for each uniquely designated period, the allowed length of stay, the start time and the end time. The specification states that an advantage of this VDU is that it is able to communicate to the listening device the fact that the vehicle is in violation ‘and is not required to continuously broadcast the “vehicle present” signal’.

49    In a further embodiment, a ‘smart middle tier’ is responsible for determining if the vehicle in the bay is in violation of a parking requirement and will communicate that information to a HHD. The specification then describes a system architecture by reference to figure 8:

The description says:

In still further embodiments a smart middle tier (with smart VDUs) may be deployed. In this scenario the middle tier provides the sophisticated functionality of the backend head office system, including receiving signals from the VDUs and storing this data in its own database. The topology of this system is illustrated in Figure 8. This system would work as follows. The Smart VDUs behave as outlined above, the smart middle tier will receive signals from all VDU's that it is configured to receive data from. The smart middle tier is constantly broadcasting wake-up messages on the designated frequency to all VDU's that are within range. Once a VDU comes within range of the smart middle tier, it responds to the connect message back to the smart middle Tier. The smart middle tier then handshakes with the VDU and requests data indicating how long the vehicle has been above the VDU (0 mins for no vehicle present), the MAC address of the VDU, and the vehicle movement in the bay since the VDU last spoke to the smart middle tier.

50    The reference to a ‘handshake’ mechanism is to technology known to those skilled in the field of electrical engineering whereby a ‘wake-up’ message is sent out by a transceiver (here, in the TMT) and a remote unit (here, the VDU) responds.

51    The specification goes on to say:

The middle Tier would then subsequently be responsible for determining if the vehicle in that bay is in violation of parking, communicate to a HHD which bay has a vehicle over it, and pass street details and infringement details to the handheld device for issuing of a PIN. Advantages if the smart middle tier include that by using smart VDU's, a permanent connection to the smart middle tier is not required in order to detect the presence of a vehicle. Subsequently the infrastructure costs are reduced as it is not required to affix the middle tiers to infrastructure every 100 metres or so. Further, this topology does not require a 3rd party permanent wireless network to communicate to the hand held devices. This would be done in a piece meal [sic] basis, by the smart middle tier as violations are detected. Also, HHDs communicate via the middle tier (and not the VDU's), and a smaller set of communications is required for both the VDU and hand held. The handheld receives infringement data and the street details, and is not required to have this data stored and determine the bay details from its internal database. This topology also lowers battery requirements due to the VDU only communicating when the smart middle tier comes within range.

52    VMS emphasises in its submissions that in this embodiment it is the smart middle tier that determines if a vehicle has overstayed, not the VDU. The smart middle tier is mobile and may be carried by a parking officer in a HHD.

3.1    The claims

53    Claims 1 – 11 and 20 – 24 are reproduced below. It will be seen that claims 1, 11, 20 and 21 are independent claims. For convenience, integers have been added to claim 1:

1.    A vehicle detection unit (VDU) comprising:

(1)    a magnetic sensor able to sense variations in magnetic field and for outputting a sensor signal caused by occupancy of a vehicle space by a vehicle;

(2)    a storage device carrying parameters which define notifiable vehicle space occupancy events;

(3)    a processor (a) operable to process the sensor signal to determine occupancy status of the vehicle space, and (b) operable to compare the occupancy status of the vehicle space with the parameters in order to determine whether a notifiable event has occurred, and (c) operable to initiate a communication from the vehicle detection unit to a supervisory device upon occurrence of a notifiable event, wherein the communication includes (i) data items pertaining to the notifiable event and (ii) communicated in a format suitable for pre-population into infringement issuing software.

2.    The vehicle detection unit of claim 1, wherein the communication is wireless and directly with a portable supervisory device.

3.    The vehicle detection unit of claim 2 wherein the communication is established in an ad-hoc manner at times when a notifiable event has occurred and when the portable supervisory device is in range.

4.    The vehicle detection unit of claim 1 or claim 2 wherein the communication is with a fixed supervisory device effecting a fixed middle tier.

5.    The vehicle detection unit of any one of claims 1 to 4 wherein the information comprises at least one of: street name, parking bay number, vehicle occupancy duration, offence details, applicable regulations, applicable monetary fine, and historical usage data.

6.    The vehicle detection unit of any one of claims 1 to 5 wherein the notifiable event comprises at least one of: occurrence of a parking violation, an imminent parking violation, a non-violating parking event of interest, and a change in occupancy status of the vehicle space.

7.    The vehicle detection unit of any one of claims 1 to 6 and further configured to be embedded in the roadway beneath an associated vehicle space.

8.    The vehicle detection unit of claim 1 wherein the sensor is a 3-axis magnetometer able to sense components of the magnetic field in x, y and z directions.

9.    The vehicle detection unit of any one of claims 1 to 8 wherein the processor is configured to execute a vehicle detection algorithm to determine whether detected variations in the sensor signal are caused by a vehicle.

10.    The vehicle detection unit of any one of claims 1 to 9 wherein the parameters are provided in firmware, and wherein the vehicle detection unit when deployed is operable to receive firmware updates to the parameters.

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

...

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

21.    A system for detecting vehicle parking infringements, the system comprising: a plurality of vehicle detection units (VDUs) each associated with a respective vehicle parking space and storing parameters defining notifiable vehicle space occupancy events, each VDU configured to sense variations in magnetic field caused by occupancy of the associated vehicle space and determine by reference to the parameters whether a notifiable event has occurred, and operable to communicate wirelessly including wirelessly transmitting data items pertaining to the notifiable event and communicated in a format suitable for pre-population into infringement issuing software; a mobile supervisory device configured to wirelessly communicate with each respective VDU when brought within range, to receive information from the VDU arising from a notifiable parking event detected by the VDU, to pre-populate received data items into infringement issuing software and to generate a parking infringement notice using the pre-populated data items obtained from the VDU.

22.    The system of claim 21 wherein the mobile supervisory device is a portable digital device carried by a parking inspector.

23.    The system of claim 21 wherein the mobile supervisory device is vehicle mounted.

24.    The system of any one of claims 21 to 23 wherein the supervisory device collates data from a plurality of VDUs for simultaneous display to a parking officer.

4.    CLAIM CONSTRUCTION ISSUES

54    It may be seen that the VDU of claim 1 is a combination of parts and functions that has: a magnetic sensor that must be able to output a sensor signal caused by the occupancy of a vehicle space by a vehicle (integer (1)); a storage device that contains the parameters defining notifiable occupancy events (such as the duration of permitted parking) (integer (2)); and a processor that is able to process the sensor signal, and compare the occupancy status of the vehicle space with the parameters provided by the storage device, to determine whether a notifiable event (such as a parking overstay) has occurred (integers (3)(a) and (b)). In addition, the processor must have the operability to initiate a communication from the VDU to a supervisory device, such as a HHD carried by a parking officer, when a notifiable event occurs (integer (3)(c)) and include within that communication data items relating to the notifiable event (integer (3)(c)(i)) ‘in a format suitable for pre-population into infringement issuing software’ (integer (3)(c)(ii)).

55    The construction of issues that arise in relation integer 3 involves addressing three interrelated questions raised by VMS: first, what is meant by the requirement that the processor is ‘operable to initiate’ communications to the supervisory device upon the occurrence of a notifiable event; secondly, the meaning conveyed in integer 3(c)(i) by the words ‘data items’; and thirdly, the level of processing required of data items once communicated to the infringement issuing software in integer 3(c)(ii). The following paragraphs should be read in conjunction with section 5.4.4 (electrical engineering common general knowledge) below.

4.1    ‘Operable to initiate a communication’

56    Claim 1 requires the VDU to include a processor ‘operable to initiate a communication’ from the VDU to a supervisory device ‘upon the occurrence of a notifiable event’. VMS contends that these words include that the VDU is operable (i.e. able) to initiate a communication upon receiving (and in response to) a ‘beacon’ (or wake-up signal) that is transmitted by a TMT or FMT. Although it is not completely clear from its submissions, it would appear SARB contends that claim requires that the VDU sends a response to a broadcast beacon message only upon the occurrence of a notifiable event. I prefer the construction advanced by VMS, for the following reasons.

57    First, the requirement of the claim is that the processor be ‘operable’ to initiate a communication upon the occurrence of a notifiable event. This means that the processor must be capable of so operating. To the extent that SARB contends that the language of the claim requires that the processor only be programmed to receive a broadcast beacon signal when a notifiable event has occurred, I reject that contention. It suffers the vice of adding a limitation into the claim that is not present – that is, inserting the word ‘only’ before ‘operable’. Claim 1 does not preclude a communication being initiated by the VDU at a time other than when a notifiable event has occurred.

58    In his written evidence Mr Evans contended otherwise, stating that the VDU ‘waits for the supervisory device to come into range and only initiates communication if there is a notifiable event’. He expanded on this in his oral evidence, stating that he considered the VDU initiates communications because it is ‘not even listening’ until it has a notifiable event to report. While I agree that the VDU does initiate communications in this context, I have rejected the suggestion that the VDU may only initiate communications with respect to notifiable events. I also reject the suggestion that the VDU is only ‘listening’ when it has a notifiable event to report on. That is not a feature of claim 1.

59    Secondly, the SARB application describes the VDU initiating a communication by listening for a beacon and, upon detecting such a signal, sending a communication in response. Thus at page 9 (line 30) it provides:

The communication between the TMT 132 and each VDU 110 is by way of an RF link. Due to the transient nature of the TMT 132 and the need to establish a new wireless connection each time it comes into range of a VDU in violation, the TMT 132 issues a broadcast beacon which can be picked up by any VDU 110 within range. If a given VDU 110 responds, the TMT 132 will then schedule communications with the VDU 110 so as to establish the new connection.

60    As the expert evidence indicates, the beacon contains data communicated by the TMT, to which the VDU is programmed to respond. In this embodiment, before the VDU will communicate with the supervisory device, it must first receive a broadcast beacon signal. However the ‘communication’ that is the subject of claim 1 is one which includes within it ‘data items pertaining to the notifiable event … in a format suitable for pre-population into infringement issuing software’. The data contained in the broadcast beacon signal is not the same data which makes up the ‘communication’ as defined in claim 1.

61    This construction also applies to claim 11. The ‘initiate’ requirement is not present in claims 20 and 21.

62    In the context of this aspect of claim 1, it is to be noted that the term ‘notifiable event’ is defined non-exclusively in the specification to include a parking violation, an imminent parking violation or ‘any non-violating parking event of interest such as a change in occupancy status’. Contrary to the suggestion made in the submissions by VMS, integer 3(c) is not to be understood to require the notification to the supervisory device of every potential notifiable event. In this regard it may be noted that dependent claim 6 is more prescriptive of notifiable events, and specifies that they will include at least one of a parking violation, an imminent parking violation or a change in the occupancy status of the parking bay. In this context I note that Professor Evans considers that a ‘key feature’ of the invention is that it minimises the amount of data that the parking inspector needs to enter manually in order to generate a PIN. This, he says, is achieved by communicating the information associated with a notifiable event in such a way that it can be pre-populated into the ticket-issuing device. Later in his written evidence he suggests that all information required to populate the fields in the infringement issuing software must be transmitted by the VDU. It will be apparent from the construction of the claim that I have adopted that this is not a requirement. In his oral evidence Professor Evans appeared to accept this view.

4.2    ‘Data items’

63    The second issue concerns the construction of integer (3)(c)(i). VMS submits that ‘operable to initiate a communication ... wherein the communication includes data items pertaining to the notifiable event’ means that all data items must be communicated in the requisite format suitable for pre-population into the infringement issuing software. SARB disputes this. In my view the construction proposed by VMS tends to overlook the plain language of the claim, which simply refers to ‘data items’ not ‘all data items’. As a matter of ordinary English, this means two or more such items. There is no technical reason why all items must be communicated in such a way. As Professor Evans explains, it could be just a sensor node ID and the duration the vehicle has been there that is communicated. Other information could be obtained by looking up the street address and suburb from a database on the supervisory device, and so it would not need to be sent by the VDU.

64    Furthermore, all information pertaining to the most relevant notifiable event – a vehicle overstay – could not be sent from a VDU, because the registration plate of the vehicle (probably the most important data item) could not be identified by the VDU, and would have to be populated in the infringement issuing software from another source (typically, manual entry by a parking officer).

65    Accordingly, the requirement of integer (3)(c)(i) is that two or more items pertaining to the notifiable event must be communicated in the requisite format for pre-population.

4.3    Processing of data items

66    The third issue concerns the meaning of the words ‘communicated in a format suitable for pre-population into infringement issuing software’ in integer (3)(c)(ii). There is no dispute that ‘pre-population’ means that data items pertaining to the notifiable event are transmitted directly into the infringement issuing software by the VDU without the need for a parking officer to take a step to do so. This approach satisfies an objective of the invention disclosed to save the parking officer time and effort.

67    VMS submits that this integer requires that the data communicated by the VDU to the supervisory device be able to be pre-populated into the data fields in the infringement issuing software without further data processing by the supervisory device. In that regard, the supervisory device should not, by the language of the claim, be required itself to process the infringement data generated and communicated by the VDU, because the work has already been done by the processor in the VDU. For instance, information generated by the VDU may include the time that a vehicle is detected arriving at a parking bay, or that a vehicle has contravened a parking requirement by overstaying. That will be recorded in a binary, computer-readable form. VMS submits that the language of integer (3)(c)(ii) contemplates that the information will be communicated from the VDU to the supervisory device in a form that can be introduced into the infringement issuing software without any translation (or ‘processing’) at the supervisory device. Accordingly, the binary computer-readable form of the data items must first be converted to a form suitable for pre-population communication to the supervisory device at the VDU, and then communicated. An example given in the evidence is where the VDU collects data as to the ‘offence date and time’ and initially records it as a 32 bit binary number in UNIX epoch format (which is the number of seconds since 1 January 1970 – for instance, 1,235,068 seconds). Infringement issuing software will use data fields in the hour/minutes and day/month/year format. VMS submits that the integer requires that the VDU communicate information in the latter format, without the supervisory device engaging in that processing. This type of processing is referred to below, depending on the context, as formatting.

68    SARB largely accepts this construction, but it submits that the language of claim 1 does not preclude additional necessary processing at the supervisory device. It accepts that where data is transmitted concerning a notifiable event from the VDU to the supervisory device, it must be in a format that is able to be placed directly into the infringement issuing software in a format that is human readable, any conversion from binary form to readable form having taken place in the VDU. However, it submits that this should not be taken to preclude some processing that is still required at the supervisory device that must always be done at the receiver end to return the data to its original form.

69    This qualification arises from the evidence of the experts as to the means by which data may be wirelessly sent and received. As noted in section 5.4.4. below, methods of wirelessly sending packets of data over standard protocols require the addition of headers and footers, and utilise cyclic redundancy checks. Data is processed in various ways in preparation for communications. For example, a ‘header’ may typically be added, such that the data transmitted does not look exactly the same, or is not in the same format, as the user wants to send. There will always be processing required at the receiver end to return the data to its original form (for instance by removing a header or conducting a cyclic redundancy check) so that the wirelessly transmitted packet of data can be received and organised.

70    In my view the requirement of integer (3)(c)(ii) is that the data communicated by the VDU to the supervisory device pertaining to a notifiable event must be able to be pre-populated into the data fields in the infringement issuing software without further conversion or calibration, as VMS submits. The integer requires that it is the VDU that performs that work, and that the supervisory device is relieved of the processing obligation for any items of data that are communicated by the VDU concerning a notifiable event. As the expert evidence explains, this involves a choice designed to save power at the supervisory device end (typically a HHD) and to impose the processing task on the in-ground VDU. An exception to this finding is necessary processing by the supervisory device of data packets sent by the VDU, such as the removal of headers, that must always be done at the receiver end to return the data to its original form. I do not consider that the language of the claim precludes processing of this nature. The fact that wireless communication is contemplated within the claim indicates that processing required as a necessary incident of such communication falls within the scope of the monopoly. Accordingly, I agree with the submission advanced by VMS, and also with the refinement or qualification added by SARB.

71    The parties agree that the limitation imposed by integer (3)(c)(ii) is present in all of the independent claims. However, VMS advances a submission that despite this agreement, the Court should independently consider and determine whether, despite slight differences in the wording, independent claims 11 and 20 include this limitation. It submits that the Court ‘stands in the shoes’ of the Commissioner in these appeal proceedings. Section 60(3) of the Patents Act provides that ‘the Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not’. VMS submits that if the Court now does not consider that this integer is present in all of the claims, it should proceed to consider whether or not an additional ground for refusing the grant of the SARB application arises, such as a failure by the claims to define the invention under s 40(2) of the Patents Act.

72    In my view the limitation expressed in integer (3)(c)(ii) is present in all of the claims. However, were it not, I would not be disposed to take up the invitation advanced by VMS. The metaphor that the Court stands in the shoes of the Commissioner does not open the door for an unpleaded and unargued ground of opposition to be raised on appeal. An opponent in this Court stands as the party advancing the basis upon which a patent application should not proceed to grant. Absent such a party, or any opposition raised by the Commissioner, the patent application will in the ordinary course proceed to grant: see Daiichi Sankyo Company, Limited v Alethia Biotherapeutics Inc. [2016] FCA 1540 at [5] and [6], and the cases cited therein. The present position is analogous.

5.    LACK OF INVENTIVE STEP: BACKGROUND

1.1    Introduction

73    VMS contends that the invention claimed in claims 1 – 24 of the patent application is not patentable within the meaning of s 18(1)(b)(ii) of the Patents Act because it does not involve an inventive step when compared with the prior art base as required by s 7(2). It relies on the disclosure of the prior art information contained in each of the PCT application, the PODS article, the Gladwin PowerPoint, the Welch presentation and the Collins patent to supplement the common general knowledge available to the hypothetical skilled person for the purpose of assessing obviousness within s 7(2). In the sections below I first consider the relevant law. I then make findings as to the relevant common general knowledge, before turning to consider the case advanced by VMS, having regard to each of the pieces of prior art information relied upon.

5.1    The law of inventive step

74    Section 7(2) of the Patents Act provides:

For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

75    The ‘common general knowledge’ is information that forms the background knowledge and experience of, and which is available to, all in the trade, when considering the making of new products or the making of improvements in old products, and it must be treated as being used by an individual as a general body of knowledge: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 292 (Aickin J).

76    The text of s 7(2) in effect deems that an invention claimed contains an inventive step, unless the party asserting its absence establishes that it does not contain such a step: AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 257 CLR 356 at [18] (French CJ). Whether or not a claim lacks an inventive step involves a rich factual enquiry. At its heart lies a qualitative assessment of whether there is sufficient invention in a combination, or a thing claimed, to arrive at the conclusion that it is obvious: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173 at [124] and [126]. The question of determining whether a patent involves an inventive step is one of degree, and is often by no means easy, because ingenuity is relative, depending as it does on relevant states of common general knowledge. This difficulty is complicated by the need to consider, as here, s 7(3) information (to which I refer below), as well as the common general knowledge: Lockwood at [51].

77    In AstraZeneca, French CJ noted (at [15]) that relevant content was given to the term ‘obvious’ by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; 148 CLR 262 at 286:

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

78    French CJ went on to explain (at [15], citations omitted and square brackets in the original):

The idea of steps taken "as a matter of routine" did not, as was pointed out in AB Hässle, include "a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps". The question posed in AB Hässle was whether, in relation to a particular patent, putative experiments, leading from the relevant prior art base to the invention as claimed, are part of the inventive step claimed or are "of a routine character" to be tried "as a matter of course". That way of approaching the matter was said to have an affinity with the question posed by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. The question, stripped of references specific to the case before Graham J, can be framed as follows:

"Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of [the existing compound], directly be led as a matter of course to try [the claimed inventive step] in the expectation that it might well produce a useful alternative to or better drug than [the existing compound]?"

That question does not import, as a criterion of obviousness, that the inventive step claimed would be perceived by the hypothetical addressee as "worth a try" or "obvious to try". As was said in AB Hässle, the adoption of a criterion of validity expressed in those terms begs the question presented by the statute.

79    The approach proposed by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 to which French CJ refers is often referred to as the ‘modified Cripps question’. As the Full Court noted in Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; 222 FCR 336 (Besanko, Middleton and Nicholas JJ) at [70] and [71], it not a question of universal application in the context of determining whether or not there is a lack of inventive step. That enquiry may be considered by reference to whether there was ‘some difficulty overcome, some barrier crossed’ or whether what is claimed is ‘beyond the skill of the calling’: Lockwood at [52], citing RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; 25 FCR 565 at 574 (Lockhart J). It has often said that a ‘scintilla of invention’ can sustain a valid invention, although this proposition is somewhat circular, because the requirement of the qualitative assessment remains that the scintilla so identified must be inventive. In any event, it is to be noted that the component of inventiveness may be but a spark.

80    As noted above at [25], there is no dispute that the person whose knowledge and approach is relevant for the consideration of inventive step in the present case is a team comprised of a person who has a practical interest in and knowledge of parking practices, equipment and technology, and an electrical or electronics engineer familiar with sensing devices, radio frequency communications and the communication of data. However, it is recognised that the question of whether or not an invention lacks an inventive step is for the Court to determine: AstraZeneca at [43]. In this regard the notional person skilled in the art is not an avatar for expert witnesses whose testimony is accepted by the Court. It is a tool of analysis ‘which guides the Court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step’: AstraZeneca at [23].

81    Section 7(3) of the Patents Act provides:

The information for the purposes of subsection (2) is:

(a)    any single piece of prior art information; or

(b)    a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

82    The ‘prior art base’ is defined in Schedule 1, relevantly as follows:

"prior art base" means:

 (a)    in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:

(i)    information in a document that is publicly available, whether in or out of the patent area; and

(ii)    information made publicly available through doing an act, whether in or out of the patent area.

83    The ‘prior art information’ is relevantly defined in Schedule 1 as follows:

(b)    for the purposes of subsection 7(3) – information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step

84    As a matter of history, under the Patents Act 1952 (Cth) (now repealed), the question of whether or not an invention was obvious was determined having regard only to the common general knowledge. Documents not part of the common general knowledge were excluded from consideration: Minnesota Mining at 287 – 292. The enactment of subsections 7(2) and (3) in the present Patents Act opened the door for additional information to be considered. Several amendments have been made to these subsections since the Patents Act came into force. Only the current version and its immediate predecessor warrant attention at present.

85    Section 7(3)(a) enables any publicly available single item of prior art information to be added to the common general knowledge for the purpose of considering the application of s 7(2). Section 7(3)(b) facilitates the addition of a combination of two or more pieces of prior art information to supplement the common general knowledge, subject to the condition that the skilled person identified in s 7(2) could, before the priority date, be reasonably expected to have combined them.

86    These requirements represent a significant departure from the more rigorous requirements of s 7(3) as it existed before the Raising the Bar Act. The earlier provision stipulated that no prior art information could be added to the common general knowledge unless the skilled person could, before the priority date, be reasonably expected to ascertain, understand, regard as relevant and, in the case of a combination of any two or more pieces of prior art, combine them.

87    As French CJ observed in AstraZeneca at [18], prior art information which is publicly available in a single document is ‘ascertained’ if it is discovered or found out, and ‘understood’ means that, having discovered the information, the skilled person would have comprehended it or appreciated its meaning or import (see also Kiefel J (as her Honour then was) at [68], with whom Gageler and Keane JJ, and Nettle J agreed). His Honour considered that the ‘relevance requirement is a threshold criterion for consideration, by the court, of a prior art publication in conjunction with common general knowledge for the purpose of determining obviousness’ (at [22]). Keifel J noted at [68], citing Lockwood at [152], that the relevance requirement is directed to publicly available information, ‘which the skilled person could be expected to have regarded as relevant to solving a particular problem, or meeting a long-felt want or need’.

88    The current form of s 7(3) was introduced into the Patents Act under the Raising the Bar Act in 2012. Item 3 of the Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 states that the new Act amends sub-s 7(3) to remove the requirement that prior art information, for the purposes of the enquiry under s 7(2), must be first ‘ascertained, understood and regarded as relevant’ by a skilled person in the art. It identifies three problems with the previous form of the subsection. First, information that was clearly relevant could be excluded on the basis that the skilled person would not have ‘ascertained’ the information. It explains that this exclusion of relevant information, which nowadays is readily available through the internet, undermines the principle that patents should not be granted for routine modifications of what was already publicly available. Secondly, that the requirements that prior art information be ‘understood’ and ‘regarded as relevant’ are implicit in the prior tests for inventive step, and those being included as threshold limitations on the prior art base complicated the provision unnecessarily, without having any substantial effect on the outcome of the inventive step enquiry. Thirdly, the then current restrictions were ‘out of alignment’ with the patent systems of Australia’s major trading partners.

89    The Explanatory Memorandum goes on to say (emphasis added):

Importantly, the changes are not intended to substantially change the operation of the existing tests for inventive step as applied to the prior art base or to permit hindsight analysis. While a skilled person is essentially deemed to be aware of and to have carefully read the publically available information, the inventive step tests are otherwise applied in the context of what the skilled person would have known and done before the priority date of the claims in question.  The tests will therefore continue to take account of factors such as whether the skilled person would have understood and appreciated the relevance of the prior art to the problem the invention was seeking to solve and whether it would be considered a worthy starting point for further investigation or development.

It also remains the case that individual pieces of prior art information can only be combined where the skilled person would have been reasonably expected to have combined them.

90    There was some dispute between the parties as to the approach to be taken under s 7(3)(b) to the combination of the prior art information upon which VMS relies. VMS first submits that the test to determine whether or not information is ‘publicly available’ under s 7(3) is answered simply by considering whether it is accessible to the public. A document that is available for inspection, or a speech delivered, anywhere in the world (the example it gives is in the basement of an obscure Russian library) is nonetheless publicly available. Next, it submits that once it is established that the information is publicly available, s 7(3) proceeds on the footing that the hypothetical skilled team is aware of and has carefully read that information. Thirdly, it submits that no single or rigid test should govern whether the skilled team could reasonably be expected to combine pieces of prior art information. It will depend on the circumstances of each case.

91    In response, SARB emphasises that once the information identified in s 7(3) has been added to the common general knowledge, it is likely that the questions of whether they would be understood and regarded as relevant is folded into the factual enquiry in s 7(2). More particularly, SARB submits that in order to establish that two or more pieces of prior art could have reasonably been expected to be combined by the skilled person for the purposes of s 7(3)(b), it is still necessary for VMS to demonstrate that the skilled addressee would have understood the pieces of prior art and regarded them as relevant, despite the fact that these words were excised from s 7(3). Furthermore, it submits that in order to conclude that it is reasonable to combine pieces of prior art within s 7(3)(b), it is necessary to canvass how and why the skilled person or team could come to do so. If the skilled person or team would not realistically combine the prior art (for instance, due to the prior art not being widely communicated or recorded), then it is not reasonable to do so.

92    As set out above, ‘prior art information’ is information in the ‘prior art base’ being information in a document that is publicly available and also information made publicly available through doing an act. Insofar as the definition concerns ‘information’ contained in a ‘document’, it is difficult to see a meaningful distinction between the two. For the most part, information in a document will be that which is written in it. A document that contains information will necessarily need to be considered in its context. If a document is made publicly available, then one may assume that all of the information in it is available to be added to the common general knowledge for the purpose of consideration by the notional skilled person.

93    The identification of any information made publicly available through doing an act, such as information imparted by the public use or demonstration of a product, or by a lecture presented in public, will be determined by proving whether the act was public or not and what was disclosed. That can be particularly challenging when it comes to ephemeral acts. However, once the Court is satisfied that identified information has been made publicly available, then that information is deemed to be available to the hypothetical skilled person for the purpose of the enquiry under s 7(2). Further, once the Court determines what information has been made publicly available, s 7(3)(a) operates such that that information is assumed to be supplied to the notional skilled person within s 7(2), for the purpose of understanding how he or she (or, in the case of a notional team, they) would consider it. Then it must be determined whether, in the light of the common general knowledge, this additional information reveals an absence of inventive step.

94    In practical terms, one may expect a party to proffer in evidence the subject matter of the information that it contends is the prior art information and, in many cases, supply that to an expert on the basis that this is assumed to be such information. That is what VMS correctly did here.

95    In relation to s 7(3)(b), when considering the combination of two pieces of prior art information, the Court must first decide what two or more pieces of prior art information were publicly disclosed. It is that prior art information that the notional person skilled in the art is deemed by the subsection to possess. Secondly, the Court must consider whether the skilled person or team could reasonably be expected to combine the two or more pieces of prior art. That enquiry is not undertaken in a vacuum, but is to be considered in the context of the task that the skilled person or team is to ‘consider’ as required under s 7(2), which is in moving from the common general knowledge to solving a particular problem, or meeting a long-felt want or need: see, by analogy, Lockwood at [152]; AstraZeneca at [68].

96    It follows that I do not accept that it is necessary for VMS to demonstrate any more for the purpose of s 7(3)(a) than that the prior art information has been made publicly available. Once it has done so, such information is notionally supplied to the person skilled in the art within s 7(2). For combining two or more pieces of prior art information, s 7(3)(b) deems that if those pieces of information are ‘publicly available’, they are be made available to the person skilled in the art. It will be a question of fact whether or not they may be reasonably be expected to be combined.

5.1    The parties’ approach to lack of inventive step

97    The approach taken by VMS to establishing lack of inventive step is to identify what it contends was the common general knowledge in the field in relation to public parking compliance as at the priority date. This it does by reference to persons with experience in local councils as parking officers, or as advisors or suppliers of equipment to them. On the basis of their knowledge, VMS contends that it may be taken that as at the priority date, the hypothetical team would be motivated to consider making improvements to existing systems involved in addressing the problem of parking non-compliance and would engage an electrical engineer to address the problem. More specifically, to build a battery-powered wireless network system having a detection apparatus (or a VDU) at one end and a person to use the data detected on the other end. For this purpose, in his first affidavit, Mr Wilson was first asked to identify the components that could be used as at the priority date to build such a system.

98    Having done so, Mr Wilson was asked to consider the content of the PCT application and provide an overview of the invention described in it. He was then asked to describe the system that he would have designed in August 2007 to implement the system described in the PCT application. He was asked to perform the same tasks in relation to the PODS article, the Gladwin PowerPoint, and the Welch presentation, before being asked whether, having read those three documents, there was additional information that he would have taken into account from any of them in designing and implementing the system described in the PCT application.

99    Next, Mr Wilson was provided the Collins patent and again asked to provide an overview of the invention described and then set out the system that he would have designed in August 2007 to implement it. In his second affidavit, Mr Wilson was then asked to provide an overview of his understanding of the invention described in the SARB application, and to compare that invention with the invention disclosed in the PCT application and the system that he said that he would design to implement that. This he did, and then performed the same exercise in relation to the remaining prior art relied upon by VMS, before turning to claims 8 and 12 of the SARB application.

100    SARB’s response was to challenge aspects of the evidence going to the common general knowledge and to rely on the evidence of Professor Evans to challenge the evidence of implementation provided by Mr Wilson.

101    Before turning to consider whether the SARB application lacks an inventive step it is first necessary to identify the relevant common general knowledge.

5.2    Common general knowledge

1.1.1    Introduction

102    I describe below the evidence relevant to the common general knowledge, and set out my findings as to the state of the common general knowledge as at the priority date.

1.1.2    Overstay detection methods

103    In August 2007 chalking was the most commonly used method of determining if a vehicle had overstayed the applicable time limit for a parking bay. This involved marking a tyre of a vehicle in a parking bay with chalk, writing down the time and date of chalking and the time limit for the parking bay in a notebook, revisiting the parking bay when the time limit had expired to check and, if the vehicle chalked was still present, issuing a PIN.

104    The chalking system had a number of recognised drawbacks which included that the chalk markings could be rubbed out by drivers, that parking officers had to visit the parking space twice to determine whether there was an infringement, and the fact that the practice required parking officers to walk on the roadside of the parked vehicles which put them in danger of being hit by moving vehicles.

105    Local councils in Australia also used metered parking systems in time-limited areas which included single space coin meters, ‘pay and display’ parking ticket machines installed on footpaths or the side of streets, and ‘multi-bay’ paid parking systems. For single space coin meters, a user would pay for a time period and parking inspectors would check the meter to see whether there was an overstay. If there was, they would issue a PIN. For ‘pay and display’ systems, members of the public were required upon parking their vehicle to walk to the machine, pay a fee, obtain a ticket and display it on the dashboard of their vehicle. Each parking ticket recorded a start and expiry time based on the fee paid and the maximum allowable time for parking. Parking officers patrolled the streets and examined the expiry times displayed and issued PINs if was any were exceeded. For ‘multi-bay’ paid parking systems, an electronic meter was installed for a series of numbered parking bays which recorded a start and expiry time based on the amount of fee paid and allowable time limit for parking. The meter recorded the start and expiry time for a particular bay and a parking officer would inspect the meters, observe the expiry time of each bay that was displayed and issue a PIN if a vehicle in the bay exceeded the expiry time recorded in the meter.

106    If a parking officer determined that there was an overstay, he or she used either a carbon copy notepad, or a HHD such as a PDA with a built-in printer or separate printer to issue a PIN. These were battery-powered. Mr Schneider was aware before May 2004 that work was being done to improve such HHDs, including reducing their weight, improving their battery life, using printers to speed up printing of tickets, and pre-populating tickets with date, time and location details to improve the speed of issue. One problem, as Mr Richardson notes, was that issuing tickets with a PDA could take several minutes. I find that it formed part of the common general knowledge that there was a known desire to improve the speed by which PINs were issued using the software in PDAs.

107    A number of HHDs and accompanying software were known and used by parking officers to issue PINs once an infringement had been detected.

108    The evidence of Mr Schneider, Mr Richardson and Mr Del Papa indicates that Database Consultants Australia (DCA), which was the former name of SARB (and which for convenience I refer to as SARB below, unless the context requires otherwise), began distributing the ‘PinForce’ software for use on PDAs in 2004. PinForce allowed operators to populate the details of parking infringements into different fields by use of a mix of check-boxes for common options and drop-down menus, in combination in some instances (for example, where a street name was being typed) with predictive text. The fields included: time and date; licence plate and registration details; vehicle details; location details; the type of parking restriction sign infringed; and whether the PIN was issued on the spot or posted. Mr Del Papa gives evidence that the only fields which were able to be populated without data input by the user were the time and date of the offence (which was calculated automatically based on the internal clock in the PDAs). These fields were populated using information that was already stored on the PDAs, not based on information supplied from a sensor. To use PinForce, parking officers would manually enter information into their PDAs which had installed the PinForce software. The PDA was connected via Bluetooth to a printer for printing the PIN. The evidence indicates that PinForce was the market leader in the field for infringement issuing software. I find that its general operation formed part of the common general knowledge.

109    ‘Autocite’ was a software and hardware solution distributed by Reino that was widely used in Australia by 2004. ‘Compex’ software was distributed by Wilson Parking in Australia. There was also at least one device supplied by Schweers, a German company. Mr Schneider gives evidence that the Compex software pre-populated the date and time information on the PDAs, and included drop-down menus for the parking bay number and address. For the Autocite system, the printer and PDA were integrated into the one device in around 2004.

110    I also find that well before the priority date the following was common general knowledge:

    the use of PDAs;

    infringement issuing software used on those PDAs containing fields which allowed for the issuing of PINs;

    infringement issuing software loaded onto PDAs (such as PinForce) with drop-down menus, predictive text and the automatic supply of date and time; and

    the use of printers in conjunction with the PDAs to enable the issuing of PINs, such printers either being operated via a connection (such as by Bluetooth technology) with the PDAs, or as part of a single unit combining the functionality of a PDA and a printer.

111    The evidence indicates that there were at least two sensor products for the detection of parking overstays on the market in Australia, the major ones being the POD system and the Meter-Eye system, the latter supplied in Australia by a division of Wilson Parking called Wilson Technology Solutions. The Meter-Eye system was new on the market in about 2006. It involved the use of an infrared sensor drilled into the side of a parking meter which emitted a beam, which was broken if a vehicle entered the parking bay. I do not consider knowledge of that system formed part of the common general knowledge.

112    Although SARB was promoting a sensor system in late 2006, the evidence does not indicate that it was available for sale prior to the priority date. There is some controversy as to whether or not the POD system formed part of the common general knowledge and, if it did, what information concerning that system was known at the time. This is addressed below.

1.1.3    The POD system

113    In May 2004 VMS filed Provisional Patent Application No. 2004902622 for the vehicle detection technology of the POD system. Mr Welch is the named inventor on that application and subsequent standard and innovation patents that have issued from it. VMS then submitted a proposal to the Maribyrnong City Council to supply the system to it for evaluation and trial. By March 2005 some 500 POD system in-ground units had been installed. Mr Gladwin, who from 1996 until 2011 was the Manager of Parking and Local Laws at Maribyrnong Council, liaised with Mr Welch in relation to the trial and had regular discussions with him about it.

114    Mr Gladwin gives evidence that during the POD system trial, the POD system supplied to Maribyrnong City Council required the use of three devices: (a) the in-ground sensor, which was supplied by VMS; (b) a handheld computer, such as an iPAQ, which was programmed by VMS to receive infringement alerts from the in-ground sensor via a radio link and display details of the infringement to the parking officer, including the bay number, vehicle overstay time, vehicle entry time, time limit and location; and (c) a ticket issuing device, which was an ‘Autocite’ brand ticket issuing machine that was used to generate PINs.

115    In order to issue a PIN, it was necessary for the officer manually to enter the infringement details displayed on the handheld computer that received data from the in-ground sensor into fields in the software on the Autocite device using drop-down menus and the built-in key pad. Mr Gladwin records that he was aware, from his own discussions with parking officers, that there was a degree of frustration amongst them that the information communicated to the PDA from the sensor was not supplied directly to the ticket issuing device, with the consequence that the parking officer had to manually enter the information. This led to errors of transcription that could invalidate infringement notices issued. I refer to this below as the manual entry problem. Mr Gladwin and Mr Welch give evidence that the manual entry problem prompted them to consider making improvements to the system so that the information from the in-ground unit could be transferred into the ticket issuing device without the need for the entry of information manually. This led Mr Welch to seek out companies to collaborate with the aim of integrating the POD system ticket issuing software with a ticket issuing device so that the infringement details were automatically entered into the ticket issuing software, referred to below as the integrated solution. I return to this subject in section 7 below, in the context of the lack of entitlement ground advanced by VMS. In my view the particular frustrations of parking officers familiar with operating POD system and the knowledge and concerns of Mr Gladwin and Mr Welch, do not, of themselves, form part of the common general knowledge. By the priority date only four councils had implemented the POD system.

116    In about May or June 2005, the POD system went live in Maribyrnong City Council, mainly in the CBD area in Footscray, replacing the chalking system used there.

117    In mid-2005 Mr Gladwin was interviewed by a representative of the ANPSG about how the POD system worked. The June 2005 issue of ANPSG’s journal ‘Making a Space’ published the PODS article.

118    ANPSG is an industry association for members of the parking enforcement industry, being predominantly council employees. It circulated its journal on about a quarterly basis. It also hosted national conferences around Australia. Mr Richardson gives evidence that when he began working in his role as Manager of Ranger and Parking Services for North Sydney Council in 2003, he initially sent members of his staff to attend the conferences, but he began to attend the conference in person from 2005 onwards. He received every edition and read some, but not all, of Making a Space from 2005 onwards. He does not recall reading the PODS article. Mr Schneider regularly attended conferences and received and read Making a Space, including the PODS article.

119    The evidence indicates that Making a Space was circulated by email to people in local councils. I find that the recipients within councils are likely to be those interested in developments in parking rules, trends and technologies. I also find that recipients are likely to have shared the journal with others in the councils such that the reach of the journal is likely to be broader than the 100 email recipients Mr Schneider approximates the journal was sent to as of late 2004. Mr Schneider for one attests to forwarding this email to other members of his organisation. In this regard, it is notable that equipment suppliers considered that Making a Space was a good vehicle for generating publicity about their products. In an email dated 28 June 2005, Daryl Marshall, a business development manager at SARB at the time, informed his colleagues that Making a Space went out to over 500 managers and team leaders within the industry across Australia and New Zealand and was ‘very well received’. Although the circulation figures may be a little exaggerated in this remark, it was plainly an important industry publication.

120    The PODS article explains that Maribyrnong City Council was using an enforcement tool that eliminated the use of chalking and took away the need for the parking officer to form a view as to the condition of the mark. In summary the article:

    says that the device is a sensor, buried 10cm under the surface of the road, one for each marked parking bay;

    the sensor detects the movement of vehicles to and from the bay by detecting the change in the magnetic field;

    the change from a ‘no car state’ to a ‘car state’ is measured and a constant ‘car state’ is timed by the device;

    the time limit of the bay is programmed into the device and once the limit is exceeded (and allowing for a grace period), the device emits a radio signal which is ‘captured by the patrolling officer who has a receiver and a handheld computer’;

    the handheld computer translates the broadcast packet of information into readable information such as bay number, time from and to, and real time date stamp; and

    the officer issues the infringement notice for the overstayer and moves on.

121    Mr Ion, as a parking officer at Maribyrnong City Council from 2005 until 2009, explains in his evidence the operation of the POD system before the priority date. He explains that when the handheld receiver with the antenna was within a certain distance of the in-ground sensor, the-in ground sensor notified the overstay to the receiver, which in turn communicated the overstay to the PDA and the PDA made a ‘ding’ sound. The PDA displayed the time of arrival, the parking bay number, the address of the parking bay and the time elapsed following a 10 minute grace period from the prescribed time. This information was transmitted from the sensor to the handheld receiver. The parking officer then went to the parking bay and checked the details of the overstay by verifying the bay number, checked if the vehicle was not exempt from parking restrictions (such as disabled parking or a resident parking permit), and checked the times of operation of the parking bay limit. If the parking officer was satisfied that there had been an offence, he or she entered the details of the infringement into a separate handheld ticket issuing device and printed the PIN from a printer in the HHD.

122    The Maribyrnong City Council trial of the POD system provoked coverage in the popular press, as well as within specialist parking enforcement circles. The Age published an article on 11 May 2005 stating that the POD system used an electro-magnetic device to detect when a vehicle came into a bay and when it left, and communicated the message to a handheld computer. The Herald Sun on the front and internal pages of its Saturday edition on 25 November 2006 provided similar coverage. National television channels 7, 9 and 10 also ran news items on the trial in or around May 2005 also identifying that the system used a remote sensor that detected a change in the magnetic field and communicated with a parking inspector if a vehicle exceeded its parking limit.

123    On 18 November 2005 Mr Gladwin gave his PowerPoint presentation (using the slides that make up the Gladwin PowerPoint prior art) at the ANPSG conference in Perth during which he described the operation of the POD system at Maribyrnong City council (the Gladwin presentation). He gives evidence that he observed between 100 and 200 people were present, including council representatives, parking officers and sponsors from the industry, including Mr Welch and Mr Del Papa. In this regard, the December 2005 edition of Making a Space provides a summary of the conference (which it refers to as the 9th ANPSG national workshop) in which it refers to the presentation, editorialising that the POD system technology ‘may one day be used across many council areas in Australia’. It reports that the workshop attracted councils from all around Australia, with 95 delegates representing 34 councils in attendance. I find that about 95 delegates were present at the Gladwin presentation, along with a number of parking officers and sponsors from the industry also attending.

124    Maribyrnong City Council issued a media release on 12 July 2006 reporting on the completion of a successful 12 month trial of the POD system, describing its operation by reference to the use of a buried device that detects changes in the magnetic field caused by vehicles entering or exiting parking bays and communicates overstay information to a PDA carried by a parking officer. The release reported significantly improved compliance during the trial, better safety for officers and fewer conflicts between parking officers and drivers as a result of not having to mark tyres and being able to show infringement details on the PDA screen.

125    The August/September 2006 edition of a magazine called ‘Roads’, which is said to be ‘Australia’s Road Management and Construction Magazine’, published an article about the successful Maribyrnong City Council trial, including similar details of the POD system as the Maribyrnong City Council media release. No evidence describes the audience of Roads, and I give the article little weight in considering whether the contents of that article formed part of the common general knowledge.

126    VMS was a sponsor of the ANPSG conference which was held in Hobart in November 2006. Mr Welch gave a 15 minute presentation about the POD system at the conference followed by a demonstration of the system on a nearby street, where in-ground sensors had been installed for the purpose (defined above as the Welch presentation). He described the operation of the system in terms that are addressed in section 6.6.2 below. His evidence, which I accept, is that there were about 100 delegates from councils all around Australia present at the conference. Mr Del Papa attended the conference on behalf of SARB and promoted its magnetic sensor product.

127    Mr Welch gives evidence that by the priority date, Maribyrnong City Council had installed POD system sensors in 770 parking bays, the City of Whitehorse had installed sensors in 493 bays, Moonee Valley City Council had installed sensors in 535 bays and the City of Yarra had installed sensors in 416 bays.

128    Mr Ion gives evidence that he was a team leader supervising about 16 parking officers at Maribyrnong City Council. In the period from 2005 until mid-2007 he used, supervised the use of, and became a ‘champion’ or liaison officer for the use of the POD system, assessing its performance and providing feedback to VMS. He received comments from parking officers implementing the system. One downside that was reported to him was that the handheld receiver with the PDA was bulky and cumbersome.

129    Another problem that he received feedback about was that it was inconvenient to carry three separate devices being a receiver, a PDA and a device to issue the tickets. He and the parking officers wanted a more streamlined system, where the information from the in-ground unit could be communicated directly to one device that had the functionality of the receiver, PDA and ticket issuing device, with the parking officer only having to enter the vehicle registration number and description of the vehicle. This was information that he channelled back to Mr Gladwin and Mr Welch.

130    Mr Ion understands that the Maribyrnong City Council was the first to use the POD system and gives evidence that there was, from at least 2006, a constant stream of interest in it from his colleagues in the parking industry. Every two or three months representatives from other councils would call or visit for a demonstration and he recalls demonstrating the system to Brisbane, Hobart, Hobsons Bay and Brimbank City Councils in the early years of using the POD system.

131    Mr Ion recalls that at the October 2007 ANPSG national conference in Sydney, there was a lot of interest in the POD system used at Maribyrnong City Council, and he was asked lots of questions about how it worked. There was a VMS display at the meeting. This was of course shortly after the priority date, but the interest in the system no doubt pre-dated the conference.

132    SARB in its submissions contends that although the common general knowledge of the hypothetical team may have included knowledge of magnetic sensors such as magnetometers, it would not have been aware of the details of VMS’s POD system product, and in particular how the integration between the sensor and the handheld devices operated. It submits that the hypothetical team would not have had practical experience using the POD system, as only four councils (out of about 500 in Australia), all located in Melbourne, had used the system before the priority date. In this regard SARB notes that Mr Richardson had seen a demonstration before November 2006 and was aware of the fact that a magnetic sensor communicated information to a PDA, however, Mr Richardson did not have a detailed understanding of how the integration between the sensor and the PDA operated.

133    SARB correctly submits that it is relevant to note that Mr Schneider had not seen the POD system product in operation prior to the priority date and as at October 2007 mistakenly thought that the system operated using infrared or sonar beams to identify parking overstay, rather than magnetic sensors. His evidence was that as at October 2007 (when he assisted in the writing of a report), the sensors were battery-powered and sent data to a central computer to identify a parking violation and thereafter the central computer would send the information back to a HHD.

134    In my view there is sufficient material to support the proposition that the aspects of the POD system set out below formed part of the common general knowledge before August 2007. I accept the evidence of Mr Schneider, Mr Welsh, Mr Gladwin, Mr Ion and Mr Richardson that members of the parking enforcement industry attended events every year during which representatives met and discussed parking enforcement issues including new technologies available. The ANPSG conferences were attended both by representatives of equipment suppliers, including SARB and VMS, and also representatives from many local councils. The same applied to networking events organised by ‘Parking Australia’ in the capital cities of Australia. I find that whilst many local councils in Australia are far-flung, the events and conferences described, and the informal networks amongst the individuals involved at the senior level of parking compliance and enforcement within councils, are such that news of significant developments and trends within the field would travel far and wide fairly quickly.

135    The PODS article and the contents of the publicity in the popular press indicates that the POD system created something of a splash after Maribyrnong City Council commenced its trial. The interest in the POD system was reinforced at the ANPSG conferences. These were attended by those interested in developments in the field of parking compliance and were likely to have been participants in the skilled team. I consider it likely that many returned to their workplaces and discussed the developments they had learned about, including the POD system with their colleagues who were similarly interested. Furthermore, as Mr Richardson says in his evidence, he learns about what other councils are doing by speaking with product suppliers such as VMS and speaking with contacts in other councils. It is plain that from 2005 VMS was actively promoting the POD system.

136    I accept that the common general knowledge would not include a detailed understanding of the mechanisms of the POD system, or experience of using the POD system. However, I am satisfied that the following information about the system formed part of the common general knowledge of those interested in the practical application of parking technology methods:

(a)    that the POD system relied on magnetic sensor technology;

(b)    that the sensor detected the presence or absence of a vehicle in a parking bay and how long a vehicle was present in a parking bay;

(c)    that there was wireless communication between the sensor and one or more external computers, in the form of portable or handheld devices used by parking officers walking in the vicinity;

(d)    that the computer used by a parking officer would send a communication when a vehicle had exceeded the time limit permitted in the parking bay; and

(e)    that the sensor and the handheld computer were battery-powered.

137    However, I do not consider that more detailed aspects of the way that the POD system worked formed part of the common general knowledge. In particular, I do not consider that the means of communication between the in-ground sensor and the various remote terminals was understood or known. Nor do I consider that the manual entry problem (identified in [116] above) was generally known. This was information peculiar to those parking officers at councils who actually operated the POD system and the evidence does not indicate that it was generally known to those in the industry.

1.1.4    Electrical engineering common general knowledge

138    There was substantial agreement between Mr Wilson and Professor Evans as to the common general knowledge, as at the priority date, amongst electrical engineers with respect to wireless sensor networks. When narrowed to consideration of what is required to build a battery-powered wireless network having a detection apparatus at one end, and a person who needs to use data about what has been detected by the detection apparatus at the other, the relevant common general knowledge may be summarised as follows.

139    At the detection end of the wireless network system, it was known that there would need to be a sensor module, the basic components of which would be:

(a)    a sensor, which could be: optical for detecting changes in light; magnetic to measure changes in magnetic field; ultrasonic to detect sound; voltage to detect voltage; or current to detect electrical current, amongst other types of sensors;

(b)    a processor, such as a microprocessor or microcontroller to collect information or data from the sensor, process it, and put it into either a format that could be used to transmit the data, or a format for storage prior to transmission;

(c)    firmware in the processor to perform the data processing functions;

(d)    a battery, a regulator and charging circuitry;

(e)    a communications port to connect and communicate data to another device; and

(f)    a radio transmitter to transmit data via a wireless network to another device.

140    Each of these parts were known before the priority date and could be obtained by a suitably skilled electrical engineer.

141    For a person to access and understand the data detected by the sensor module it needs to be in readable form. The processer will convert changes detected in a physical parameter of interest (such as the magnetic field or ‘flux’, measured in units of Teslas and Webers respectively) to changes in an analogue electrical signal. The analogue electrical signal, which is the output of the sensor, is then converted to a digital signal comprising bits having a value of 0 or 1 so that the processor can store the data in the binary form until required.

142    There were by the priority date a number of generally accepted wireless communication networks that adopted protocols for the transmission of data, including Bluetooth, the 3G mobile phone network and the IEEE 802.11 wireless local area network.

143    A digital signal is transmitted over a wireless network according to one or other of the available protocols. It will contain a packet of data, which, depending on the protocol used, will generally include a ‘start’, ‘header’ and ‘payload’, the payload being the data for transmission and the start and header identifying the network to be used and the source and destination of the transmission. At the end of the payload there is typically a ‘cyclic redundancy check’ which is a value used for error checking to make sure that the data arrives at its destination without being corrupted. The digital signal is transmitted by the radio transmitter in a series of data packets at a defined rate to a receiver which then displays it for the human user.

144    At the receiving end, it was known that there would need to be:

(a)    a radio receiver to receive the digital data transmitted;

(b)    a processor to process the digital data into a format for display, which may be limited to pixilating data into a visual form, or may involve calibrating raw data;

(c)    memory to store the data received;

(d)    firmware; and

(e)    a user interface.

145    The receiver will detect the incoming digital signal, and the processor is programmed to recognise the protocol so that it can extract the information from the incoming signal and return it to its original form prior to the inclusion of a start, header and payload.

146    It forms part of the common general knowledge that from an engineering perspective, one of the most important considerations in designing a wireless sensor network is energy efficiency. It is particularly important where the different components do not have a readily accessible power source. Sensor nodes in wireless networks are typically battery-powered, because it is often expensive to link them to mains power. There are different ways to design a sensor node to be energy efficient, such as programming aspects of the sensor node to turn off completely or to operate in a ‘low-power’ mode until required. By way of example, Professor Evans describes circumstances where the sensor node is programmed to take measurements once per hour by programming the processor to instruct the sensor to turn off or go into a low-power mode for 59 minutes per hour. Alternatively, a sensor node can be programmed to communicate data once per day, by programming the processor to instruct the transmitter to turn off or go into a low-power mode for 23 hours and 59 minutes per day. These were all matters of common general knowledge. Determining the amount of power to be consumed by different parts of a sensor and communications system depends on factors such as the amount of data to be transmitted, how often it is to be transmitted and the distance the signal is to travel. As the expert evidence indicates, balancing these requirements were tasks for the electrical engineer within the skilled team.

6.    LACK OF INVENTIVE STEP: THE PCT APPLICATION

6.1    Background

147    There is no dispute that the PCT application was published on 24 November 2005 and is a single piece of prior art information within s 7(3). Furthermore, there is little dispute as to the disclosure of the PCT application, which may be summarised as follows.

148    The PCT application is entitled ‘Method, apparatus and system for parking overstay detection’. The field of the invention concerns the detection of vehicles that overstay a defined time interval in a parking space. The background to the invention identifies a number of shortcomings with the method of chalking tyres to identify non-compliant vehicles and states that a means is needed to overcome these shortcomings.

149    In the broadest statement of the invention the PCT application says:

According to an aspect of the present invention, there is provided a method for identifying overstay of a vehicle in a parking space. The method comprises the steps of detecting presence of a vehicle in the parking space using a detection apparatus, processing and storing data relating to presence of the vehicle in the detection apparatus, wirelessly waking-up the detection apparatus, wirelessly retrieving at least a portion of the data from the detection apparatus, and indicating overstay of the vehicle in the parking space based on the retrieved data.

150    In general terms the PCT application discloses a wireless network sensor system and method for detecting overstaying vehicles in a parking space, involving:

(a)    a sensor node referred to as a detection apparatus with sensing, computing and communication capabilities, with equipment that includes: (i) a battery; (ii) a detector for detecting the presence of a vehicle (one option being a magnetometer buried beneath the road that detects changes in the earth’s magnetic field to determine if a vehicle is in a car space); (iii) a processor for processing data received from the detector, such as the length of the stay of a vehicle in a space; (iv) a radio receiver used for receiving a wake-up signal from a separate ‘data collection apparatus’; and (v) a radio transmitter; and

(b)    the detection apparatus connecting wirelessly to a data collection apparatus that can be portable, in that it can be used by a parking officer on foot or mounted on a vehicle travelling past the parking space, thereby wirelessly transmitting data from the detection apparatus to the data collection apparatus for processing and review.

151    The experts agree that a purpose of the system and method is to determine if a vehicle has overstayed in a parking bay, so that a PIN can be issued to the vehicle that has overstayed. When a parking officer is notified of an overstay by the data collection apparatus, the parking officer can issue a PIN.

152    Significantly, there is no dispute that the PCT Application does not describe how a parking officer will issue a ticket when a parking overstay is detected. The parking officer could manually input data into a ticketing device or write out the ticket in a ticket book. Alternatively, the data collection apparatus could be connected to a ticketing device or system. A further alternative would be to design the data collection apparatus with functionality to issue the tickets.

153    The experts also agree that the PCT Application discloses two different options for determining a vehicle overstay. In one, an overstay is calculated at the detection apparatus and then transmitted to the data collection apparatus. In the other, it is calculated at the data collection apparatus. The experts disagreed as to which is the first or main option as presented in the specification and which is the second. However, they agreed that before a parking officer could issue a ticket, he or she would need to know at least the overstay location and the overstay time.

6.2    The contentions

154    VMS submits that the common general knowledge plus the disclosure of the PCT application demonstrates that the invention claimed in the SARB application contains no inventive step. It submits that the PCT application discloses an invention that has all of the features apart from the pre-population feature of integer 3(c)(ii) of claim 1.

155    VMS submits that it was obvious to combine integer (3)(c)(ii) of the SARB application, being that data items pertaining to the notifiable event are to be communicated in a format suitable for pre-population into infringement issuing software, with a VDU having all other features of claim 1, because:

(a)    By the priority date, the skilled team implementing the PCT application would have recognised as a matter of course that the VDU should be integrated with a ticket issuing device;

(b)    It was common general knowledge that an integrated system of this type should pre-populate the infringement data into the infringement issuing software;

(c)    Even if integration in this manner was not common general knowledge, it was an obvious way to implement the PCT application because certain ‘pre-population’ technology was already used in infringement issuing software (in particular PinForce), such as drop-down menus and predictive text, and the auto-population of the date and time of the parking offence in the PIN based on the clock in the PDA;

(d)    PinForce was the market leader and utilised generic PDAs. Any person trying to implement the main embodiment of the PCT application using a generic PDA operating PinForce would have recognised that unless the overstay detection software was integrated with PinForce in a way that pre-populated the data fields, it would be inconvenient, because it would require toggling between two software applications on the same device to issue the PIN. In this regard, VMS draws on the evidence of Mr Ion and Mr Gladwin to the effect that the manual process of reading and transposing infringement details from the screen of a PDA into a separate device was obviously time-consuming and inconvenient. It also relies on the evidence of the experts that it would be preferable and obviously more convenient to house the ticket issuing software on the same device as the supervisory device (that is, the data collection device of the PCT application) and also to have the fields pre-populated;

(e)    The obviousness of pre-populating the infringement issuing software with infringement details generated by the detection apparatus of the PCT application is reinforced by secondary evidence in two forms. First, that the suppliers of detection sensor technology on the market before the priority date did so: each of SARB (then known as DCA), VMS and Meter-Eye had integrated or decided to integrate their sensors with a ticket issuing device in future. Secondly, there were four main ticket issuing device companies, three of which (DCA, Schweers and Wilson Technology) had decided to integrate their ticket issuing devices with the sensors of the aforementioned companies;

(f)    Once a decision is made to pre-populate the data fields in the infringement issuing software, it is a mere ‘design choice’ as to which to processor should convert the overstay information into a human readable format, the options being the processor located at the detection apparatus (which is what the patentee chose to do in claim 1 integer (3)(c)(ii)), the processor located in the data collection device, or the processor located in the PDA or other ticket issuing software. The skilled addressee would expect the choice of any of those three possibilities to be workable; and

(g)    The skilled engineer is unlikely to choose to allocate the task of processing the overstay information to the processor located in the detection apparatus because that is the least efficient of the options. The expert evidence establishes that numerical data formats that are not suitable for pre-population are smaller in data size than alphanumerical data formats that would be suitable for pre-population. The larger size of the data that the detection apparatus must transmit, the greater the power use, and battery drain. Accordingly, claim 1 is for a VDU that uses an obviously less useful embodiment compared to the other embodiments. There is no inventive step in making such a choice.

156    SARB contends that the invention claimed in the SARB application is inventive. First, it submits that it was not obvious to integrate an in-ground VDU with a handheld device so as to have the processor of the VDU operable to process data in order to communicate data items relating to a notifiable event in a format suitable for pre-population into infringement issuing software. In this regard, SARB characterises VMS’s approach is to assume that an obvious way to overcome the inconvenience of using two devices (one being a data receiving collection device, and the other a PDA to issue PINs) was to combine the two and pre-populate the data generated by a detection apparatus into the PDA. SARB submits that the PCT application is not in any sense motivated by any problem concerning the issuing of PINs, but is rather concerned with the difficulties parking officers face when using the chalking method to establish infringement. Professor Evans’ evidence is that the person skilled in the art reading the PCT application would focus on overcoming the chalking method problem. Mr Wilson accepted that his consideration of the question of ticket issuing involved some thinking ‘above and beyond’ the disclosure in the PCT application.

157    Secondly, SARB submits that the particular form of integration it developed in the SARB application was not obvious given the ways that the functions of the VDU consume power, and the concern to ensure that the battery-operated VDU uses energy efficiently. Before the skilled addressee could determine the optimal system, the skilled team would need to: determine the type of sensor to use; determine the functions of the sensor node and the base station; conduct general calculations to form an hypothesis about the likely best solution; and then test the hypothesis. This would have involved a project where the skilled addressee would not have been directly led to try the claimed solution. As the evidence of Mr Wilson made plain, it would have involved a solution where the processing occurred in the handheld device, not in the VDU. In this regard, SARB submits that it is not enough that an idea may be ‘worth trying’. SARB submits that the comments of the Full Court in Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 at [93] must be treated with ‘some caution’.

158    Thirdly, SARB submits that the PCT application discloses a ‘primary architecture’ where the data collection apparatus calculates overstay, or at best that overstay can be calculated either in the detection apparatus or the data collection apparatus, and it would not be possible to choose between them without further investigation, which would be non-trivial. It submits that the PCT application contemplates the use of alternative sensors, or multiple sensors, and alternative system configurations.

159    Fourthly, in the PCT application the data collection apparatus initiates communications, whereas the VDU does so in the SARB application. In the PCT application, these are sent repeatedly and consistently regardless of the occupation of the parking bay, and do not occur only when there is a notifiable event. In the SARB application, however, a communication is only sent when there is a notifiable event. This argument relies on a construction of claim 1 that I have rejected in section 4.1 above.

160    Fifthly, SARB relies on secondary evidence to support a conclusion that the claimed invention is not obvious, citing Lockwood at [115] – [116], being the failure of VMS to arrive at a solution to the manual entry problem notwithstanding its desire to do so in the period from 2005 until after the priority date.

6.3    The expert evidence

161    Mr Wilson was asked to set out the system that he would have designed in August 2007 to implement the system and method described in the PCT application. He did so prior to reading the SARB application. Professor Evans responded.

162    Mr Wilson said, based on the disclosure of the PCT application, that he would first select a detection apparatus with:

(a)    a magnetometer as the sensor device;

(b)    a processor with two modes of operation, an operating mode and a sleep or low-power mode, with functionality to be able to control and receive readings from the magnetometer, process data from the magnetometer and put data from the magnetometer into a format for transmission or for its storage prior to transmission, and additionally, to interface with the battery charging circuitry to collect information on the status of the battery;

(c)    external memory;

(d)    an ultra-high frequency (UHF) transceiver that has an operating mode and a low-power or sleep mode; and

(e)    a lithium battery such as that recommended in the PCT application which is capable of providing the apparatus with 5 to 10 years of continuous operation.

163    The device that Mr Wilson would design would take a sample every couple of seconds to detect the presence or absence of a vehicle. The signal would be detected by the magnetometer as an analogue voltage signal that is converted by the processor into a digital signal and logged with a time and date stamp. A timer in the detection apparatus would be commenced when a vehicle was detected and stopped by the absence of a vehicle. Although the PCT application describes the use of either UHF or low frequency (LF) transceivers, Mr Wilson would choose a UHF transceiver as the more space and power efficient option.

164    Professor Evans largely agrees with the approach so described, although he disagrees that a magnetometer is the ‘most logical choice’ of sensor on the basis of the disclosure of the content of the PCT application. He accepts that the PCT Application identifies a specific sensor as being a Honeywell HMC1052 2-axis magnetometer, but considers, on the basis of the statement in the document that ‘other magnetometers and/or sensing devices may be practised in place of, or in addition to, the 2-axis HMC1052 device’, that the skilled reader is encouraged to test various types of sensors and would not know which one to select without further researching and testing other sensors.

165    In concurrent evidence Professor Evans agreed that because the Honeywell magnetometer is identified explicitly by reference to a particular model and brand, that it is an obvious starting point, but he was reluctant to accept that he would have expected a magnetometer to be a workable design choice to detect whether a vehicle was present or absent in a parking space. In the course of his cross-examination on this subject, it became apparent that Professor Evans’ approach in this regard was based on a researcher’s natural scepticism that what is described in a patent specification would necessarily perform, or more particularly, would necessarily perform in an optimal fashion. However, I consider that the identification in the PCT application of a particular magnetometer type and brand to be a strong indication to the reader that such a device is likely to work, and has been made to work by the authors. Indeed, the PCT application states that the authors have conducted tests using the Honeywell device to identify the preferred magnetic axes to use. It is indeed logical to select that option when seeking to implement the system disclosed. In this regard, I prefer the evidence of Mr Wilson.

166    Mr Wilson secondly turns in his evidence to consider the disclosure in the PCT application of the data collection apparatus, and features he would implement. In his view they would include:

(a)    a UHF transceiver with an operating mode and a sleep or low-power mode;

(b)    a processor that has functionality to allow it to request and receive information from the detection apparatus, display a notification of an overstay and display the current status of the parking bay concerned, and store information from the detection apparatus, including historical vehicle movements, in its memory or the external memory;

(c)    external memory; and

(d)    a rechargeable battery with a minimum of one day of operation before recharging is required.

167    Mr Wilson observes that the PCT application does not describe how a parking officer will issue a ticket when an overstay is detected. However, as I have noted, he and Professor Evans consider that it is implicit that the purpose of the system described is to detect an overstay so that a ticket can be issued. Mr Wilson gives evidence that he would accordingly design a data collection apparatus with the functionality to prepare and issue tickets, thereby having a single HHD that incorporated the three functions of data collection, ticket preparation and ticket printing.

168    Mr Wilson would design this integrated device to include a processor that had the same functionality as the data collection apparatus described above in [167(b)] and additionally a user interface with a LCD display and a basic keyboard. Although not described in the PCT application, this would have built into it the means to prepare and print a ticket.

169    Initially Professor Evans disputed that it was apparent, based on the disclosure of the PCT Application, to design the additional functionality described by Mr Wilson in order to issue a ticket. However, in his oral evidence Professor Evans’ attention was drawn to three aspects of undisputed common general knowledge in the field concerning one method of issuing parking infringement notices before the priority date. First, the programming of generic PDA devices with infringement issuing software. This was what the PinForce software was used for. Secondly, that parking officers used the PDAs to input the information needed to issue tickets into that software by the use of drop-down menus and check boxes. Thirdly, that parking officers printed infringement notices using separate printers that communicated via Bluetooth with the PDAs.

170    On the basis of these assumptions Professor Evans accepted that if a local council had asked him to implement the PCT application, and its officers were already using PDAs with infringement issuing software, then it would be an obvious inconvenience for the parking officer to receive information concerning the overstay on the parking detection device and then separately and manually have to enter the information into the parking infringement software on the same device. This would be the case if the software used to indicate the overstay on the PDA was not integrated with the ticket issuing software also on the PDA. As counsel for VMS put it, that would involve toggling between two separate software applications and the parking officer manually transposing data from one to the other. Professor Evans accepted that a person seeking to implement the PCT application in August 2007 for a local council would recognise that an obvious way to overcome that inconvenience would be to pre-populate the overstay time and location data generated by the detection apparatus into the PDA’s infringement issuing software. I accept that evidence as logical and cogent.

171    Mr Wilson then turns, thirdly, to the processes of data collection, processing and transmission. Mr Wilson observes in his evidence the importance of minimising power consumption in the detection apparatus. He notes that in the PCT application, if the detection apparatus receives a request for data from a data collection apparatus, the processor in the detection apparatus will retrieve and process the data requested and ‘wake up’ the transmitter in the transceiver, which in turn will transmit the data and then go back to ‘sleep’.

172    In his implementation, overstays would be determined by the magnetometer detecting the presence or absence of a vehicle, with a sample of the sensor’s status taken every few seconds by the processor. When it detected an alteration in the analogue signal for voltage emitted by the magnetometer, the processor would identify whether it was a reading consistent with the presence of a vehicle. If it was, the signal would be converted to digital form. The processor then would determine whether there has been an overstay using the following information stored in the detection apparatus (which Mr Wilson calls determination information):

(a)    vehicle absent or present (‘yes’ or ‘no’);

(b)    if a vehicle is present, the time elapsed on the timer; and

(c)    permitted period of stay.

173    Mr Wilson explains that the transceiver in the detection apparatus would ‘wake up’ periodically (for instance, every quarter of a second, as exemplified in the PCT application) to determine if a data collection apparatus was nearby. The parking officer would press a button on the data collection apparatus to initiate a request for current status, vehicle overstay or the like from the detection apparatus.

174    The detection apparatus would process the stored data to determine whether, at that point in time, there was an overstay and transmit a ‘yes’ or ‘no’ as to overstay to the data collection apparatus and, if it was a ‘yes’, the data collection apparatus would send a further request (manually or automatically) to the detection apparatus for transmission of what Mr Wilson defines as the overstay information, being date, time of arrival, length of stay, permitted parking period, time of inspection and the unique identification number of the parking bay.

175    Mr Wilson expresses the view that he would transmit the overstay information from the detection apparatus without formatting the values into human readable form, because this is likely to consume less energy both in terms of power used in the processor and, because it contains fewer bits, in terms of power used to transmit. This approach would in his opinion maximise the battery life of the detection apparatus.

176    Fourthly, in Mr Wilson’s system the data collection apparatus would format the overstay information upon receipt of the data (so that it was readable by a parking officer) and display and include that information to the extent necessary in the parking ticket, which could then be printed. This approach would consume less power by the detection apparatus and thereby save battery life. An example of the type of processing saved in this way may be seen in section 4.3 above.

177    This fourth step achieved some prominence in the parties’ closing submissions, because by adopting this approach, Mr Wilson clearly made a choice that is inconsistent with the invention as claimed in the SARB application at integer (3)(c)(ii) of claim 1. It will be recalled that this integer requires that data items communicated by the VDU relating to a notifiable event be in a format suitable for pre-population into the infringement issuing software.

178    No doubt conscious of this, the solicitors for VMS then asked Mr Wilson whether he would consider transmitting the overstay information from the detection apparatus to the data collection apparatus ‘in any other form’. This was a hindsight ‘nudge’ in the direction of the invention claimed in the SARB application.

179    In response, Mr Wilson reiterated his preference for choosing to transmit the data in unformatted form to preserve battery life, but then said that transmitting the data in a previously formatted or encrypted form would also be a ‘workable, logical alternative design choice’. He considered that transmitting the overstay information after it had been formatted would enable the data to be used, displayed and/or stored without the need for any data formatting (that is, conversion into human readable form) by the processor at the data collection apparatus. Having decided this, in his written evidence Mr Wilson considered that transmitting the overstay information after it had been formatted would be a ‘neater and more convenient design from an electronics engineering perspective’ for two reasons. First, because it would save data processing being undertaken by the data collection apparatus, which could make firmware upgrades more efficient. In his oral evidence, Mr Wilson accepted that this was unlikely to be a usual or frequent event. Secondly, it would enable the detection apparatus to transmit data to another device, in addition to the data collection apparatus, without the additional device having to be programmed to format the data it receives. In his oral evidence Mr Wilson accepted that the additional device would most likely be a back office computer system of a local council, in respect of which there would not likely be any issues of power conservation, and the formatting of the data at that point would be a simple matter.

180    Despite these explanations for the alternative approach, ultimately in his oral evidence Mr Wilson re-affirmed that in his mind, the most suitable design of the system would be that which he nominated before he was given the ‘nudge’, being that the data collection apparatus would format the data into a readable form for humans rather than the detection apparatus.

181    In the Joint Expert Report, Professor Evans and Mr Wilson agreed that it is generally desirable to minimise the amount of data to be transmitted by the detection apparatus as transmitting data requires significant energy. They further agreed that:

more attention [is to be paid] to minimizing the amount of data to be transmitted rather than to other factors such as the format required by the end user device.

182    The experts disagreed as to whether less or more data will need to be transmitted if overstay is calculated by the detection apparatus or the data collection apparatus. In the event overstay was calculated at the data collection apparatus, Professor Evans considered it feasible that only two items would be required to be transmitted: the sensor identification number, from which the location of the parking bay could be determined; and the vehicle presence duration, which could be compared with the permitted period of stay by the data collection apparatus. Mr Wilson considered that it would be more energy efficient for the detection apparatus to determine whether or not a vehicle was in overstay. Then it would only need to transmit a ‘yes’ or ‘no’ message upon receipt of a request for information from a data collection apparatus. If the answer was yes, the overstay information would be transmitted. It is apparent from their evidence that the difference between the experts on this subject concerned working out which approach minimised the amount of data to be transmitted.

183    The experts agreed that as at August 2007, it was possible to design functioning systems where the calculation of overstay took place either at the data collection device, or at the detection apparatus, and that either method could enable a system to automatically determine whether a vehicle was in overstay.

184    During the course of cross-examination, the experts were asked by VMS to make the following three assumptions (emphasis added):

(1)    You are implementing the PCT Application in August 2007 with a magnetometer and determining vehicle overstay using the processor in the detection apparatus;

(2)    The PDA that is being used to interface with the data collection [device] operates the infringement issuing software that is used to print the parking infringement notice;

(3)    A local council client requests, as a design requirement, that the overstay time and location information that is communicated from the detection apparatus is pre-populated into the infringement issuing software operated by the PDA device, to save the officer from manual entry.

185    They agreed that in order to populate the fields of location information and overstay duration in the PDA into human readable format, one of the processors in the system would have to be allocated the function of converting that data into the data format required by the infringement issuing software. The three processors that could potentially be allocated this role are in the detection apparatus, the data collection apparatus, and the PDA (if the third was separate to the data collection apparatus and the PIN issuing software was located there). The experts also agreed that as at August 2007, they would have expected to be able to produce a workable system that pre-populated the location information and overstay duration in the infringement issuing software using any one of those processors to perform the data formatting function.

6.4    Disclosures of the PCT application

186    The detailed description provides an embodiment using a particular commercially available Honeywell magnetometer. I have earlier rejected Professor Evans’ view that a magnetometer would not necessarily be selected. Although it is true that alternative sensors are mentioned, in my view the teaching of the use of the magnetometer in the embodiment is plain and I accept Mr Wilson’s evidence that the skilled engineer seeking to implement the disclosure of the PCT application would use it with an expectation that in performing its normal function the magnetometer would succeed. The PCT application says that tests on the Honeywell magnetometer have indicated that the preferred two sensing axes are the vertical and horizontal axes. A person skilled in the art reading the specification would understand that this is a preferred device. The detailed description further describes how the detection apparatus is buried beneath the ground, a specification that eliminates the use of some alternative sensors, such as an infrared beam. Furthermore, the skilled team would have an awareness that the POD system used a magnetic sensor and that it had been made to work.

187    The PCT application discloses that the magnetic sensor output will be in the form of an electrical signal such as voltage. The skilled reader understands that the processor will execute an algorithm that interrogates the amplitude of the sensor signal to determine whether a vehicle is present or absent.

188    The embodiment first described in the detailed description also includes within the detection apparatus a processor and memory that processes and stores data relating to the presence of a vehicle in the parking space. The processing and storage functions within the detection apparatus are described as including a commercially available Texas Instruments MSP430 16-bit microcontroller with an on-board real-time clock and on-board flash memory for storing data and the software program executed by the microcontroller. That embodiment also describes the use of a radio receiver and a radio transmitter for inclusion in the detection apparatus and a preferred battery type.

189    There was some disagreement between the experts as to whether the PCT application disclosed, as its primary embodiment, that the detection apparatus or the data collection apparatus determines vehicle overstay. There is no dispute that both options are disclosed. In the Summary of the Invention both are mentioned (emphasis added):

The data collection apparatus comprises a radio transmitter for transmitting wake-up signals to ones of the plurality of detection apparatuses, a radio receiver for receiving data from woken-up ones of the plurality of detection apparatuses, a memory unit for storing data and instructions to be performed by a processing unit, and a processing unit coupled to the radio transmitter, the radio receiver and the memory unit, the processing unit programmed to process the data received via the radio receiver and to indicate incidences of vehicle overstay...Overstay of a vehicle in a parking space may be determined at the detection apparatus by processing data received from the detector.

190    In the detailed description, one embodiment describes the detection apparatus as recording vehicle movements, and determining and maintaining information about an overstay. That apparatus is said to be optionally programmed with information relating to hours of operation and parking time limits such that decisions concerning overstay can be made by the apparatus. As an alternative, decisions relating to vehicle overstay ‘may be made by a data collection apparatus that collects data from the apparatus…via a radio communication link rather than the apparatus…’ In a further embodiment the data collection apparatus enquires with the detection apparatus as to whether a vehicle has overstayed a limit, thereby indicating that the detection apparatus calculates the overstay.

191    In implementing the disclosure, I have no doubt that the person skilled in the art would have to construct a prototype and experiment to determine which approach was suitable for purpose. In large part, the choice as to the location of the processing function would include consideration by the person skilled in the art of what was a power-efficient option. I am satisfied that the electrical or electronics engineer in the hypothetical skilled team would hold the skills necessary to conduct a balancing exercise in allocating power usage between the detection apparatus and the data collection apparatus. As I have noted above, one of the most important considerations in designing a wireless sensor network is energy efficiency, particularly where the different components do not have a readily accessible power source. It was known to electrical and electronics engineers in the field that both the data collection apparatus and the detection apparatus would be battery-powered.

192    The PCT application describes how the data collection apparatus may be configured. In figure 4 it is described to have a communications interface coupled to a computer unit by means of a Bluetooth wireless communications link. The computer unit has a liquid crystal display screen for displaying data. The specification says:

The computer unit 430 may comprise a proprietary computer platform or an off-the-shelf portable computer such as a personal digital assistant (PDA). In one embodiment, a Symbol PPT8800 ruggedised personal computer is practised as the computer unit 430.

193    The PCT application describes how wireless communication between the data collection apparatus and the detection apparatus may be initiated by the sending of a ‘wake-up’ signal from the data collection apparatus to the detection apparatus and an enquiry as to whether the vehicle presently parked has overstayed an allowed time limit. The specification says:

... parking violations may be identified as enforcement officers walk or drive in the vicinity of monitored parking spaces. When the data collection apparatus shown in Fig 4 is used by a pedestrian enforcement officer, the interface unit 410 may be mounted on the officer’s belt while the computer unit 430 is operated in a hand-held manner....A data collection apparatus transmits a wake-up signal (eg RF carrier followed by a defined message) and listens for valid responses from detection apparatuses. If no response is received from a detection apparatus, the data collection apparatus repeatedly transmits the wake up signal.

194    The expert evidence indicates that the ‘wake-up signal’ involves a communication protocol where a detection apparatus receives the wake-up signal and responds in the next communication by communicating data (either overstay information or determination information) to the data collection apparatus. In Mr Wilson’s implementation he would have a parking officer press a button on the data collection apparatus to make a request for current status (vehicle overstay or the like) from the detection apparatus. At that point the detection apparatus would respond by transmitting the overstay data (see [172[] above). This is not materially different to the process that I have found amounts to an initiation of a communication within integer 3(c) of claim 1. Although in its closing submissions SARB submits that it is the data collection apparatus rather than the detection apparatus that initiates communications, in my view that does not accord with the expert evidence regarding the wake-up message and broadcast beacon processes. For the reasons I have addressed in section 4.1 above, the sending of a wake-up signal does not amount to an initiation of a communication as required in claim 1.

6.5    Consideration of inventive step in the context of the PCT application

195    I now turn to consider the invention as claimed in claim 1 of the SARB application, in the context of the PCT application. For convenience, claim 1 of SARB’s application is repeated below:

A vehicle detection unit (VDU) comprising:

(1)    a magnetic sensor able to sense variations in magnetic field and for outputting a sensor signal caused by occupancy of a vehicle space by a vehicle;

(2)    a storage device carrying parameters which define notifiable vehicle space occupancy events;

(3)    a processor (a) operable to process the sensor signal to determine occupancy status of the vehicle space, and (b) operable to compare the occupancy status of the vehicle space with the parameters in order to determine whether a notifiable event has occurred, and (c) operable to initiate a communication from the vehicle detection unit to a supervisory device upon occurrence of a notifiable event, wherein the communication includes (i) data items pertaining to the notifiable event and (ii) communicated in a format suitable for pre-population into infringement issuing software.

196    As at the priority date the skilled team was motivated to make improvements to existing systems. It is with this in mind that the skilled team considers the disclosure of the PCT application: see AstraZeneca at [18] (French CJ) and [69] – [70] (Kiefel J). That document is directly related to the field of parking enforcement. It identifies a problem with the chalking method of detecting vehicles exceeding their parking limit, and proposes to resolve it with a system that uses a detection apparatus to process and store data about a detected vehicle, and includes wireless communication to a data collection apparatus.

197    The disclosure of the PCT application is of a VDU with the features of integers (1),(2), 3(b), 3(c) and 3(c)(i). However, there are forks in the road that the skilled team encounters before arriving at the combination of integers in claim 1.

198    One point of difference from the SARB application is that the PCT application discloses two embodiments relevant to integer (3)(a). In one, the detection apparatus has a processor operable to process the sensor signal to determine the occupancy of the vehicle space. In another, the processor that determines overstay is located in the data collection apparatus. In my view neither is a ‘primary’ disclosure. The teaching is that the skilled team must make a choice between the two. The evidence discloses that it was possible to design functioning systems where the calculation of overstay took place either at the data collection device, or at the detection apparatus, and that either method could enable a system to automatically determine whether a vehicle was in overstay, but it is left open to the skilled team to decide which way to go. This represents a first point of uncertainty for the skilled team seeking to implement a system or method as disclosed in the PCT application.

199    This leads to a second point of uncertainty arising from the disclosure because the skilled team must consider whether, in implementing the sensor system disclosed, to include a functionality for issuing PINs. SARB submits that the PCT application does not identify a problem that requires solution in the context of issuing a PIN where a sensor device communicates data to a HHD. That is correct, because the problem to which the PCT application is primarily directed is the replacement of the manual chalking technique for overstay detection with a sensor system. However, when one takes into account the common general knowledge of the skilled team, in my view it is likely, for the reasons set out below, that such a person would immediately perceive the need to somehow use the output from the sensor to issue a PIN.

200    First, it was known, in the context of the traditional means of detecting parking violations using manual techniques such as chalking tyres, that councils used HHDs such as PDAs to issue PINs, and that these HHDs were linked to printers. The operation of these devices formed part of the common general knowledge. Using these devices, parking officers had to manually input information, using a combination of drop-down menus, manual text entry and sometimes predictive text. Although the use of these features increased the efficiency of the process of issuing PINs, manual entry of the information and the issuing of the PIN still took between 30 seconds and a few minutes, depending on the complexity of the PIN. The evidence of Mr Schneider and Mr Richardson persuades me that efforts were being taken as at the priority date to improve the speed of ticket issuing. The use of PDAs loaded with such software was well known at the priority date, and the software was developing.

201    In that context, I am satisfied that the skilled team, including as it does persons with a practical interest in the automated enforcement of vehicle parking compliance requirements, would as a matter of course consider how that data would be used in the issuing of tickets.

202    Secondly, one merely needs to consider the practical difficulties that are involved in a parking officer transposing information from one device (or item of software on an integrated device) into another to identify the solution to those difficulties. In a street-side setting a parking officer must record information accurately to ensure that the infringement notice is not liable to challenge. The less typing required, the less that can go wrong. The manifest challenges of toggling between applications are addressed by removing the need to toggle. That is accomplished by a mechanism whereby the data transmitted to the handheld device from the sensor is incorporated into the infringement issuing software. There is no doubt in my mind that the idea to integrate the information received from the detection apparatus into some form of infringement issuing software would necessarily have occurred to the person skilled in the art as at the priority date, who would have included it as a requirement for any implementation of the disclosure of the PCT application.

203    Thirdly, I have noted that the PCT application discloses the use of a data collection apparatus in conjunction with a PDA (a Symbol PPT 8800). The skilled team would understand that such a device was used at the priority date (together with software such as PinForce) to enable a parking officer to prepare a ticket for printing.

204    Fourthly, I am fortified in this view by the fact that a number of people, ranging from parking officers engaged with Maribyrnong City Council to Mr Welch and Mr Gladwin, swiftly recognised the problem and its solution. Although the manual entry problem was not part of the common general knowledge, their reactions provide a secondary indication of the correctness of this view.

205    Fifthly, so too did Mr Wilson – himself not a parking officer or engaged in the industry – who upon reading the PCT application (and without the benefit of the disclosure of the SARB application) understood that the purpose of the system disclosed was to determine vehicle overstay so that a ticket could be issued. He concluded that a data collection device with the functionality to issue the tickets, without having to manually write tickets, made sense. Professor Evans in his written evidence inferred that the handheld computer disclosed in the PCT application may be used to print an infringement notice, but went no further. However, when provided with the matters of common general knowledge referred to above at [170], and asked to assume he was implementing the PCT application for a local council already using PDAs and infringement issuing software to issue tickets, Professor Evans readily agreed that an obvious way to overcome the inconvenience of transferring information from one software application to another was to ensure that information from the detection apparatus was pre-populated directly into the infringement issuing software. This evidence might also be described as providing secondary support for the view that the hypothetical team would as a matter of course have had this idea.

206    The consequence of these findings is that the skilled team would as a matter of course have decided that data sent from the detection apparatus should somehow be entered into infringement issuing software.

207    However, the PCT application provides no teaching at all about how data communicated to a data collection apparatus is to then result in the issuing of a PIN. Choices must be made after the second point of uncertainty is resolved in order to proceed. One choice is to identify the architecture of the system. This gives rise to a third point of uncertainty. One option is to send data from the detection apparatus to a data collection apparatus, and then communicate that data to a separate HHD (such as a PDA) loaded with infringement issuing software, so that the data fields can be populated. Another option is to decide to integrate the data collection apparatus and the HHD loaded with the infringement issuing software into one device. Mr Wilson favoured the integrated solution, but Professor Evans points out that that approach itself involves several choices, such as whether or not to simply unify the two devices into one bulky handheld device, or to design a new integrated PDA that is designed to be more efficient by using single components to replace duplicated ones. It would involve undertaking a significant project. A third option is to use a different architecture altogether, that involves data being sent from the data collection unit to a central computer and then from the central computer to HHDs. Each option has two or more processors that could be tasked with the formatting of data.

208    A fourth point of uncertainty is the choice as to what device in the system chosen is to undertake the processing of the overstay information so that it is suitable for pre-population into infringement issuing software. This arises from the fact that, as noted above, the PCT application does not address how to issue a PIN where a sensor device communicates data to a HHD. Neither the PCT application nor the common general knowledge supply a ready answer to the question of which processor in a wireless sensor system should undertake the processing to format the data items into a format suitable for pre-population into the PIN issuing software. I accept that the implementation of the choice, once made, may be relatively straightforward. In this context the experts agreed that that if the data were being sent from the detection apparatus to a data collection apparatus, either integrated with a PDA or linked to a PDA, the choice would be between one of three processors (being processors in the data collection apparatus, the PDA or the detection apparatus). However, I am not satisfied that the selection of the processor in the detection apparatus (or the VDU of claim 1) as the one to perform the formatting is obvious.

209    The fact that Mr Wilson required a ‘nudge’ suggests that it was not obvious. He considered that it is more likely to be power-efficient to transmit data from the detection apparatus to the data collection apparatus prior to formatting. Specifically, he expected that it would consume less power to transmit the overstay information in unformatted form than in formatted form, because of the additional processing power that it would take to effect the formatting. After the ‘nudge’ he agreed that another viable way to proceed was to have the detection apparatus format the data. He considered that the determination of where to format the data would come down to an understanding of the user requirements of the system. That would involve consideration of how often a parking officer will patrol an area, how the information collected by the detection apparatus is to be used and how much energy is used in each step in the system. As an example, he stated that he would use a current meter to measure the overall power consumption of the detection apparatus when transmitting and receiving data. He said that he would not make a final decision on the form in which overstay information would be transmitted from the detection apparatus until he had completed these steps.

210    Professor Evans agrees that designing a system of this type is a reiterative process, beginning with a high-level assessment of the components, and theorising about how the system would work best. The next stage is prototyping, which in most cases requires minor tweaking or an adjustment to the parameters. In his view, it is the amount of information to be sent that ‘has far more significant implications in terms of energy usage than the “format” in which the data is sent’. Professor Evans emphasised in his evidence that the outcome of such an exercise is unpredictable and that it is not easy or straightforward to balance these requirements in order to arrive at an optimal outcome from the perspective of power usage. Mr Wilson’s evidence is that an engineer with five years of experience would have been able to undertake an assessment and then, after the prototyping phase, ‘determine the optimal format in which to communicate data’. The evidence of both experts makes plain that the task of assessment and selection would involve a process of hypothesis, prototyping and testing. These considerations leave to one side the option that the general architecture of the system may involve the detection apparatus transmitting overstay information to a central computer, which would in turn transmit it to a handheld device. This would introduce a fourth potential processor.

211    In considering inventive step, I am conscious that the question is whether the combination, not each integer, is obvious. It is impermissible to take any one integer or take each integer seriatim and ask whether each integer involved an inventive step. The invention is the combination. The plurality in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [21] (Gleeson CJ, Gaudron, Gummow and Hayne JJ)) said at [41]:

…The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of “perhaps many possibilities” which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers. This expression of the issue follows what was said by Aickin J in Minnesota Mining.

(Citation omitted.)

212    In my view the four points of uncertainty that I have identified must be considered. The second point may be set to one side, for the reasons that I have given. But the remaining points, taken together, yield a conclusion that one cannot safely find that VMS has discharged its onus of demonstrating, on the balance of probabilities, that the invention claimed in claim 1 lacks an inventive step. In this regard I am conscious of the fact that with each of the first, third and fourth points of uncertainty, the skilled team must make decisions about how to proceed. For each of the processes of hypothesis and prototype testing, evaluation will be required. The decisions are to be made without the benefit of any hindsight knowledge of the solution achieved in the SARB application. The evidence disclosed that for the most part, the decisions will be made by having regard to the balancing of considerations, mainly with respect to power usage. Choices must be tested using prototypes and then compared with other options. In each case the team must evaluate and then decide what direction to go in. In my view, whilst the number of alternative solutions is relatively limited, there is no single line of logic that leads to the invention as claimed such that it can be concluded that the combination arrived at was ‘very plain’, or obvious. In my view the qualitative evaluation weighs sufficiently in favour of SARB to arrive at this conclusion.

213    I am to a limited extent fortified in this view, as a secondary consideration, by the fact that by VMS and Mr Welch had not developed an integrated product by the priority date, despite having the idea to do so in early 2005 in light of the feedback it had received from Maribyrnong City Council. In September 2006 VMS told Cottesloe Council that it would make every effort to have a demonstration of an integrated solution operating in October 2006. In late 2006 it decided to partner with its third choice of ticket issuing provider, Schweers. Despite VMS informing the marketplace of its plans, it took VMS and Schweers until 8 April 2008 to produce a prototype version of a system that integrated the POD system with a Schweers HHD via Bluetooth. I accept the evidence of Mr Welch that quite a lot of the time was spent failing to find a suitable business partner with which VMS could collaborate on the project, and that there may have been difficulties with prioritisation of the project. But at an impressionistic level it seems to me improbable that the solution to the manual entry problem was obvious, having regard to the time required by VMS to achieve that outcome.

214    Accordingly, I find that the challenge to the validity of the claims for want of inventive step based on the PCT application fails.

1.1    The PCT application considered with the POD system prior art – s 7(3)

1.1.1    Introduction

215    For the purposes of establishing its obviousness case VMS also relies on a combination of the disclosure of the PCT application together with each of: (a) the PODS article; (b) the Gladwin PowerPoint; and/or (c) the Welsh presentation (POD system prior art). In its pleaded case it had relied also on technical specifications for a certain microprocessor and transceiver as documents to be combined with the PCT application, although it abandoned that ground in closing submissions. It also did not press reliance on the POD system prior art independently of the PCT application.

216    In closing submissions VMS submits that the hypothetical skilled team could reasonably be expected to have combined the POD system prior art and the PCT application within s 7(3)(b) of the Patents Act. It submits that the electrical or electronics engineer in that team would recognise that the most detailed disclosure is the PCT application, but would find that additional information can be obtained from the POD system prior art, specifically:

(a)    for Professor Evans, the Gladwin PowerPoint taught him that the magnetometer was functioning in a workable way to detect vehicle overstays;

(b)    for Professor Evans, the Welch presentation would be useful when implementing the PCT application as it would prompt him to recognise that there was utility in having an integrated ticket issuing device, so that information about a parking offence was automatically loaded into infringement software;

(c)    for Mr Wilson, the POD system prior art would serve to confirm the design decisions that he had made when he considered the PCT application alone and to remove the use of assumptions when designing such a system; and

(d)    the PODS article discloses that the detection apparatus (not the data collection apparatus) determines vehicle overstay, so while both options of calculating overstay are obvious for the reasons given above, the PODS article would also be useful to the electrical or electronics engineer.

1.1.2    The POD system prior art

217    The PODS article is summarised at [121] above. There is no dispute that it was made publicly available. It is an ANPSG representative’s account of an interview that he conducted with Mr Gladwin. Neither Professor Evans nor Mr Wilson would rely on it to supplant aspects of the detail provided in the PCT application, although Mr Wilson would find it useful as an example of an implementation of a system within the PCT application disclosure. In my view the PODS article is a piece of prior art information that the skilled team would be reasonably expected to combine with the information in the PCT application within s 7(3)(b) of the Patents Act. The team members whose expertise lay in parking compliance systems would consider the article to be of relevance to their work. It supplies a description of an operational sensor system of a type that clearly falls within the systems described in the PCT application. Furthermore, despite the scepticism expressed by Professor Evans, in my view a hypothetical electrical or electronics engineer in the notional team would have an interest in learning of this implementation, if only for confirmation that such a system has been made to work. Accordingly, in my view the threshold question of whether or not a skilled person (or here, team) could be reasonably expected to have combined the information contained in the PODS article with the PCT application should be answered in the affirmative.

218    However, the PODS article does not refer to pre-population of data items into infringement issuing software, which is a crucial item of detail absent from the disclosure of the PCT application. Furthermore, the PODS article states, in the explanation given of the operation of the system, that (emphasis added) ‘[t]he hand held translates the broadcast packet of information into readable information...’. As Professor Evans points out, this teaches against a communication in the form of integer (3)(c)(ii), in that data concerning a notifiable event is not communicated in a format suitable for pre-population into the infringement issuing software. Accordingly, in this respect the PODS article could not assist VMS.

219    VMS relies on the Gladwin PowerPoint only as a publication of the slides that Mr Gladwin showed. It does not rely on any aspect of the spoken presentation made. Mr Gladwin recalled presenting slides 1 – 18 and 26 but ‘quickly skipped through’ the slides 19 – 25 as his co-presenter, who was eventually unable to present, was meant to present those slides. Shorn of detail provided during the presentation, the meaning of the slides is opaque. As a document that has been made publicly available during the course of the presentation the slides are able to be combined within other prior art information. However, I do not consider that a person seeking to implement the PCT application would, having reviewed them, have found the information in them to be of any practical use in the implementation of the PCT application.

220    The Welch presentation was made to the November 2006 ANPSG conference by Mr Welch. He gave evidence about his presentation in an affidavit sworn in other proceedings between the parties (VID 318 of 2012) which was sworn on 14 April 2014, nearly 8 years after the presentation. He says in his affidavit that he spoke for about 15 minutes in a formal presentation to a larger group of delegates before moving to a nearby street, under which the POD system’s sensors had been installed, and demonstrated their operation. In his affidavit, Mr Welch purported to give a rendition of words to the effect that he spoke at the conference. However, he wrote no script for his presentation prior to presenting it in November 2006 (other than some handwritten notes shortly beforehand which he did not preserve), and the rendition was based on his unaided recollection of the events 8 years earlier.

221    That narrative was then extracted by VMS and supplied to Mr Wilson and then later to Professor Evans in a separate document, on the assumption, to be proved at trial, that it would be a piece of prior art information available to them for consideration pursuant to s 7(3) of the Patents Act. Such an approach is, in my view, the correct approach. However, the challenge facing a party relying on a prior act in the form of a lecture is to prove the content of the prior art information made publicly available. It is at this level that VMS faces insurmountable hurdles.

222    In cross-examination, senior counsel for SARB asked Mr Welch an open question: ‘what did you say in your presentation at that conference?'. Mr Welch then purported to recite the entirety of the presentation. A comparison between the written narrative and his oral evidence yields, unsurprisingly, substantial differences as to form and content. Notably absent from the oral rendition is the statement upon which VMS now places reliance:

Our plans are now to integrate the PDT [the PDA] with the ticket issuing device so that information about the offence is automatically loaded into infringement software. We estimate this will save about 30 seconds to 1 minute per PIN.

223    Three observations about this may be made. First, there is of course an intrinsic danger in relying on an unaided recollection of events first given 8 years after the event, and then given again under cross-examination 13 years after the event. There is no suggestion that Mr Welch was not doing his best (then and now) to recall what happened, but memories fade. It is unlikely that Mr Welch would recall what he said with any reliable accuracy. Secondly, in the witness box Mr Welch confidently purported to repeat what he said. It is apparent that in so doing he did not have a clear recollection. He prefaced his rendition with the observation that ‘I said what I normally say’, fairly and honestly suggesting that his evidence is a reconstruction rather than a memory. The discrepancies reveal that his memory is not elephantine. Thirdly, no witness who was present at the conference came forward to provide support for what was said by Mr Welch.

224    As a consequence of these matters I do not regard either the written narrative version or the oral version given in his evidence to be reliable as an accurate rendition of what was presented at the conference. More particularly, I am not satisfied to the requisite standard that the words quoted above at [223] were presented at the conference. As the only reliance placed on the Welch presentation is confined to the proposition that it would prompt a person skilled in the art such as Professor Evans to recognise that there was utility in having an integrated ticket issuing device so that information about the offence was automatically loaded into infringement software, the presentation may be set to one side.

225    For completeness, for the reasons explained in section 5.2, had the information relied upon by VMS been proved to form part of the Welch presentation, I would have considered that it was available to be combined with the PCT application and the PODS article within s 7(3). Furthermore, I would have considered that the skilled team could, before the priority date, have been reasonably expected to combine the PCT application, the PODS article and the disclosure. However, even had these pieces of information been added to the materials collectively available for consideration under s 7(2), the outcome would not have been different to that set out in section 6.5 above. None touch upon the most material aspects of the claimed combination.

6.6    The Collins patent

226    In its pleaded case, VMS relied on a combination of the common general knowledge, the Collins patent and a document known as the Meter-Eye Brochure in support of a separate contention that the invention claimed in the SARB application lacks an inventive step. In closing submissions, it abandoned reliance on the Meter-Eye Brochure and confined its case to the Collins patent.

227    The Collins patent is entitled ‘Vehicle monitoring apparatus, system and method’. The Summary of the Invention describes, in its broadest embodiment, a vehicle metering device for detecting and metering a vehicle parked on a bay, having components including a control means, vehicle sensing means, a power supply means, and a telecommunication means arranged together in a durable casing. The sensing means in use is mounted in, or about, a parking space to detect when a vehicle parks and when it leaves the parking space, and to feed status signals to the control means. The control means includes a timer for counting out a pre-set time period (representing the allowable time period for legal parking), and is programmed to generate and send an output coded signal, via the telecommunication means, to a remote receiver means to confirm the time period that vehicle in the parking space has been parked, along with identification of the parking space.

228    The document does not disclose that the vehicle sensing means may be a magnetic sensor. Although it states that ‘any suitable sensing means’ may be employed, the only description of a sensor device is of an infrared beam circuit. This is said to trigger an ‘occupied’ signal when a vehicle breaks the beam’s circuit, which is established using a suitable reflective device and set out in an appropriate place to reflect the transmitted beam across a parking space. The sensing mechanism is located above the ground. Furthermore, the Collins patent does not disclose whether the vehicle metering device prepares the data in a format suitable for pre-population into infringement issuing software.

229    In the context of the disclosure of the Collins patent, I would not consider that a general statement that ‘any suitable sensing means may be employed’ is such that a skilled person would independently supply a magnetic sensor in preference to an infrared sensor arrangement of the type that is specifically described. When asked, Professor Evans gives evidence in his affidavit he would not do so without further research. In his affidavit evidence, Mr Wilson proposes that for an open-air setting, he would replace the use of an infrared beam sensor with a magnetometer. However, in cross-examination he accepted that, when it came to considering the implementation of the Collins patent, magnetometers were on his mind after having just read the POD system prior art, including the PCT application. In this regard, I consider that a person seeking to implement the Collins patent would turn to the system described in it, and would not otherwise consider using an in-ground magnetic sensor without first considering and trying to use an infrared sensor.

230    Having regard to this omission, in my view consideration of the Collins patent, together with the common general knowledge, does not yield the conclusion that the invention claimed in the SARB application lacks an inventive step.

1.    LACK OF ENTITLEMENT

1.1    Introduction

231    VMS contends that SARB is not entitled to be granted a patent for the invention claimed in the SARB application, or alternatively, SARB is only entitled to the grant in conjunction with Mr Welch and possibly Mr Gladwin. This claim arises pursuant to s 59(a) of the Patents Act, which provides that a person may oppose the grant of a standard patent on the ground:

(a)    that the nominated person is either:

   (i)    not entitled to a grant of a patent for the invention; or

(ii)    entitled to a grant of a patent for the invention but only in conjunction with some other person.

232    The named inventors in the SARB application are Paul Carboon, Stephen Toal and Sandy Del Papa. However, VMS submits that Mr Welch, or alternatively Mr Welch and Mr Gladwin, conceived of all or part of the invention and communicated it to Mr Del Papa under a fetter of confidence during the course of confidential discussions held with him between June 2005 and April 2006 that were held with the purpose of integrating the POD system with SARB’s PinForce software (referred to above as the integrated solution). In so doing, VMS contends that Mr Welch, or both he and Mr Gladwin, ought to be named as inventors. They have not been. The consequence is that SARB has not derived title from the true, or additional, inventor or inventors and is not entitled to the grant pursuant to s 15 of the Patents Act.

233    VMS submits that the evidence of Mr Welch reveals that the core inventive concept in the SARB application is, or at least includes, an integrated VDU system in which: (a) the presence of a vehicle is detected using a magnetic sensor; (b) the processor in the VDU determines whether a vehicle has overstayed the time limit; (c) the VDU wirelessly communicates the infringement details to a supervisory device carried by a parking officer; and (d) the infringement details are pre-populated into the infringement software. VMS submits that to the extent that Mr Del Papa denies or cannot recall conversations with Mr Welch, his evidence was not truthful and was materially contradicted by contemporaneous documents. It contends that once the idea of the inventive concept was disclosed to Mr Del Papa by Mr Gladwin and Mr Welch, all that was required was to reduce it to practice, which involved no inventive ingenuity. As a result, Mr Welch alone, or with Mr Gladwin, were either the inventors or contributed sufficiently to the invention to warrant the rights of joint inventorship with the other named inventors. Either way, SARB has never derived title to the invention from these additional inventors, and so is not entitled to the grant.

234    SARB submits that the inventive concept disclosed in the SARB application as reflected in claim 1 requires that the processor in the VDU should initiate communication with the supervisory device, and do so only on overstay, and send the infringement information in a suitable format for pre-population into infringement issuing software. It submits that neither Mr Welch nor Mr Gladwin communicated this to Mr Del Papa. Furthermore, SARB submits that the evidence of Mr Welch and Mr Gladwin, taken at its highest, does not establish that the inventive concept was communicated or address any detailed discussions as to how any integration might be achieved, as to which there were many potential routes. It submits that the evidence does not support the contention that the information communicated to Mr Del Papa was under a condition of confidence.

1.2    The law relating to entitlement

235    Section 15 of the Patents Act provides that a patent may only be granted to a person who:

(a)    is the inventor; or

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

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

(d)    is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

236    Accordingly, the primary person to whom the patent will be granted is the inventor. All other people derive title to the patent, and the invention claimed therein, via the inventor.

237    In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474; 67 IPR 68, Crennan J considered the position of competing claims to inventorship status and said:

[132]    Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions.  If the final concept of the invention would not have come about without a particular person’s involvement, then that person has entitlement to the invention.  One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants.  The fact that the parties were in collaboration can be a major consideration: see Illuka Midwest Ltd v Wimmera Industrial Minerals Pty Ltd (2001) 55 IPR 140; Re Upham and Commissioner of Patents (1998) 28 AAR 276; Re Applications by CSIRO and Gilbert (1995) 31 IPR 67; Row Weeder Pty Ltd v Nielsen (1997) 39 IPR 400; Sunstrum & Payette v Boland (2003) 59 IPR 146.

238    This aspect of her Honour’s decision was not considered on appeal: JMVB Enterprises Pty Ltd (formerly A’Van Campers Pty Ltd) v Camoflag Pty Ltd [2006] FCAFC 141; 154 FCR 348. The passage was cited with apparent approval by the Full Court in Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9; 165 FCR 527 (Finn, Bennett and Greenwood JJ) at [53].

239    A determination as to whether one or more people should be regarded as being joint inventors will require a decision-maker to analyse the invention and the timeline in the research which led to it. In Polwood the Full Court said (emphasis in original):

[33]    The entitlement to the grant of a patent as the inventor is not determined by quantitative contribution.  The role of joint inventors does not have to have been equal; it is qualitative rather than quantitative.  It may involve joint contribution or independent contributions.  The issue is whether the contribution was to the invention.  What constitutes the invention can be determined from the particular patent specification which includes the claims.  In some cases, evidence can assist.  In some cases, the reduction of a concept to a working apparatus by a person may not be part of the invention, in other cases it may be.  For example, the construction of an apparatus may involve no more than carrying out the instructions in the specification.  This would not normally entitle that person to joint inventorship.  On the other hand joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed. 

[34]    One criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention.  It may be that an invention is made as part of a collaborative effort.  In those circumstances, it would ordinarily follow that the collaborators are joint inventors of the product of the collaboration.  In the present case, the subject of the patent application was not part of a continuing collaboration recognised as such by the parties.

[35]    To ascertain the inventor for the purposes of entitlement to the grant of the patent it is therefore necessary to determine the contributions to the invention described in the patent application.  The claims may assist in that determination, bearing in mind that the claims may be to less than the totality of the invention.  It may also be appropriate to investigate the contributions to the inventive steps giving rise to the invention.

240    Later, after a review of the authorities in the United States and the United Kingdom, the Full Court said:

[60]    The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims.  The body of the specification describes the invention and should explain the inventive concepts involved.  While the claims may claim less than the whole of the invention, they represent the patentee's description of the invention sought to be protected and for which the monopoly is claimed.  The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it.  There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution.  The invention may consist of a combination of elements.  It may be that different persons contributed to that combination.

1.3    The facts

241    There was some dispute between Mr Del Papa on the one hand, and Mr Gladwin and Mr Welch on the other, as to the content of their conversations in 2005 and 2006. Given the distance of time between the conversations and their written evidence of those conversations, which for Mr Welch and Mr Gladwin was in affidavits given in 2014, and for Mr Del Papa in 2017 (a statutory declaration given in the opposition proceedings) and 2018, I have particular regard to the contemporaneous record of correspondence in determining what findings can safely be made. My findings, having regard to all of the evidence, are set out below.

242    In early 2005, sometime after the Maribyrnong City Council commenced the POD system trial, Mr Gladwin perceived the manual entry problem, which had been reported to him by council parking officers. On one occasion, Mr Gladwin said to Mr Welch, words to the effect of ‘we need to be communicating the infringement details directly from the sensor to the ticket issuing device’. It will be recalled that at that point the POD system used three devices, including the in-ground sensor that communicated with a HHD whereupon the parking officer then manually entered data into the Autocite software on a ticket issuing device (as set out at [115] above).

243    Mr Welch contends that he communicated a similar idea to Mr Gladwin, namely to the effect that parking officers should not have to manually enter infringement details into the ticket issuing device. It is unclear whether Mr Welch is referring to the same conversation as Mr Gladwin.

244    At about this time, in early 2005, Maribyrnong City Council was interested in obtaining a new ticket issuing device, because the Autocite devices used were old and bulky, and were not compatible with any Windows-based software or non-Autocite software. Mr Gladwin knew that DCA (now SARB) had expertise in ticket issuing machines, because the Council had purchased some and was using them to issue tickets for non-parking law enforcement purposes. He thought that it was a good idea for Mr Welch to speak with SARB to see if the POD system could be integrated and used with SARB’s ticket issuing machine.

245    Sometime before 28 June 2005 Mr Gladwin telephoned Mr Del Papa, whom he understood from the 2004 ANPSG conference to be a senior salesman at SARB. He recalls saying that he wanted to talk about seeing whether the POD system’s software could be run on SARB’s HHD. He recalls Mr Del Papa responding that this ‘sounds like a good idea’. On 28 June 2005 Mr Gladwin sent an email to Mr Welch with Mr Del Papa’s contact details included.

246    Mr Welch gives evidence that sometime after this email in about August 2005, he contacted Mr Del Papa. It was the first time that they had spoken. He recalls saying words to the following effect (the Welch proposal) (emphasis added):

Tom Gladwin and I have discussed the benefits of integrating PODS with a ticket issuing device. [The POD system] is currently displaying offence details to the officer on a PDA, the officer must read the details from our PDA and enter them manually into their Autocite. It would obviously be much better if the offence details went straight into the infringement application. Since you’re using PDAs and Maribyrnong is already a customer of yours I thought I should call you to see if you are interested in working together on this.

247    Mr Welch recalls arranging a meeting with Mr Del Papa, at which they met in a carpark and he explained to Mr Del Papa the way that the POD system worked. He recalls repeating the manual entry problem, and said that he wanted to integrate the POD system with the ticket issuing device ‘so that data is exchanged automatically and the officer only has to enter vehicle details’.

248    Mr Welch gives evidence that during the 2005 ANPSG conference, he and Mr Del Papa had a further discussion about the POD system in the foyer of the Mercure Hotel. Noel Reid, the Manager of Parking at the City of Melbourne Council, then came up between them and put his arms around their shoulders, exchanging words to the following effect:

Mr Reid:    You guys need to make your product [pointing at me] talk to your product [pointing at Mr Del Papa].

[Mr Welch]:    We are already working on it.

249    In his written evidence Mr Del Papa says that he does not recall discussing the integration of the POD system with SARB’s handheld device during either his conversation with Mr Gladwin or his conversations with Mr Welch. He contends that the conversation with Mr Gladwin was limited to arranging a meeting between himself and Mr Welch, and the conversations with Mr Welch were limited to the commercial matter of a proposed distribution agreement between VMS and SARB. However, whatever Mr Del Papa’s current recollection is, it is not supported by the contemporaneous documents. Nor do I consider it probable that commercial arrangements alone were discussed with Mr Welch when he gave the POD system demonstration in the carpark. It seems to me to be likely that Mr Welch raised with Mr Del Papa the technical reason why he considered that the two companies should seek to work together, being to integrate the POD system with SARB’s HHD. I consider the email correspondence relevant to this period below.

250    On 28 June 2005 Mr Del Papa wrote an email to his superior at SARB, the chief executive officer Declan Ryan, attaching a copy of the PODS article. His email includes the following:

The industry rag is attached below – we will get some great mileage out of this...best of all, it costs us nothing.

This won’t make any sense to you until you read the article, the company developing the [POD system] would like to meet with us.

251    His email forwarded another email from a business development manager at SARB of the same day to a number of SARB employees (referred to above at [120]), including Mr Del Papa and one of the other named inventors in the SARB application, Mr Toal. That email includes the following (emphasis added):

[SARB] would like to welcome Maribyrnong City Council as our newest PinForce customer, who will also be moving across from our main competitor AutoCITE in the upcoming months. Both organisations are very interested in progressing the PODS capabilities. We have a 4 minute Channel 10 news video in the office if you would like to know more about the POD system.

252    About an hour later, Mr Del Papa sent two emails to two representatives of the City of Sydney Council, attaching the PODS article, informing them that Maribyrnong City Council had recently chosen PinForce to replace the Autocite device, and saying (emphasis added):

Maribryong [sic] are the Council trialling the [POD system] described in this article. We will be working with the [POD system] development team to investigate integration between our products.

253    These statements tend to support the evidence given by Mr Gladwin to the effect that he had done more than raise commercial matters for consideration, but had raised the question of integration directly with Mr Del Papa.

254    Furthermore, on 14 July 2005 Mr Del Papa sent a further email to Mr Ryan. In it, under the heading ‘Partnership Considerations’, he refers to having had a lengthy conversation with the principal of a company that has a product that enables parking officers to electronically detect vehicles which had overstayed. In cross-examination he confirmed that the principal to whom he was referring was Mr Welch. The email says that VMS would like to distribute PinForce. Mr Ryan responds on the same day, expressing interest. This email indicates, and I find, that Mr Welch is mistaken in his dating of his first conversation with Mr Del Papa, and that it took place sometime between 28 June 2005 and the first part of July 2005.

255    Some time later, on 18 November 2005 Mr Del Papa attended the Gladwin presentation given at the ANPSG conference in Perth. He recalls that Mr Gladwin presented a number of slides describing the use of the POD system at Maribyrnong. At the conference Mr Del Papa was promoting the use of PDAs with the PinForce software, which was the leading parking infringement issuing software operable on generic PDAs at the time.

256    On 23 November 2005 Mr Del Papa sent a further email to Mr Ryan. It is entitled ‘Parking opportunity...PODS’. Its contents warrant repetition (emphasis added):

On your return I would like to discuss an interesting opportunity with you. I found this email below which briefly explains a system called PODS currently being used by Maribyrnong. Basically, it is an underground vehicle detection system that drives Parking officers to offending vehicles via a PDA and receiver. It also makes issuing the infringement more efficient as the information can be automatically pre-populated within PinForce.

The Maribyrnong pilot was presented at the Perth Conference and most Councils loved the concept, particularly CoMelbourne. Noel was urging us to integrate the two systems. The products primary market is local government enforcement organisations i.e our existing customers.

I’ve spoken with the Principal (whom is outspoken character) to determine if there is interest in a closer relationship (JV, equity, etc), particularly given our client database, and he is interested. He views the primary benefit with DCA is its Australia/NZ client base but is not so certain for international markets.

This is worthy of closer investigation and could provide another growth plank.

Any early comments?

257    The ‘email below’ to which Mr Del Papa refers is an excerpt from the email with the passage under the heading Partnership Considerations dated 14 July 2005, to which I have referred at [255]. Mr Del Papa confirmed in cross-examination that ‘Noel’ is Noel Reid from the City of Melbourne Council. Whilst initially giving written evidence that he did not recall the conversation with Mr Reid and Mr Welch referred to at [249] above, Mr Del Papa retracted that evidence during cross-examination.

258    The content of these emails gives me considerable confidence that Mr Welch indeed made a suggestion to Mr Del Papa addressing the form of collaboration between VMS and SARB.

259    I also find that prior to the Welch proposal, Mr Del Papa had not considered the prospect of developing a system using a magnetic sensor device or using PinForce or other software in conjunction with such a sensor device. In this regard I do not accept Mr Del Papa’s evidence that prior to his 23 November 2005 email to Mr Ryan, he may already have started working on some preliminary aspects of a SARB in-ground magnetic sensor system. It seems to me that in his oral and written evidence Mr Del Papa was concerned, as best he could, to dispute any suggestion that the source of this idea had come from any third party.

260    I find the contemporaneous correspondence tends strongly in favour of the conclusion that Mr Welch made the Welch proposal in July or August 2005, that Mr Del Papa subsequently attended the November 2005 ANPSG conference and was reminded of the existence of the POD system by the Gladwin presentation, that he was encouraged by Mr Reid from the City of Melbourne Council to consider integration, and that Mr Del Papa then took up the idea with Mr Ryan. Thereafter, as the documents described below reveal, he pursued the idea of collaboration with VMS.

261    On 10 March 2006 Mr Del Papa sent a Confidentiality Deed to Mr Welch for execution. The covering letter states that SARB was excited by the prospect of moving forward ‘with your product as a component of [SARB’s] broader Infringement Management and Traffic Management Solutions suite’.

262    On 16 March 2006 Mr Welch supplied a Draft Distributorship Agreement to Mr Del Papa. The introduction section notes that VMS had developed the POD system and that it wished to appoint an exclusive distributor (plainly SARB) to sell the POD system in Australia. It states that one of the responsibilities of VMS was to supply to customers ‘an application programming interface (API) to permit third party enforcement terminal applications to interface and exchange data with PODS’. One of the responsibilities of SARB’s was ‘Integrating its own PIN issuing application with [the POD system] using the API to be supplied by VMS’.