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Warren Gregory Tobin v ASB Bank Limited [2006] NZIPOPAT 7 (20 February 2006)

Last Updated: 16 October 2008

P7/2006

IN THE INTELLECTUAL

PROPERTY OFFICE OF
NEW ZEALAND

IN THE MATTER of the Patents Act 1953

AND

IN THE MATTER of Letters Patent No 522421 in the name of WARREN GREGORY TOBIN
Patentee

AND

IN THE MATTER of an application for revocation of said patent under section 42 by ASB BANK LIMITED
Applicant

Hearing: 2 February 2006

A J Pietras for the Patentee
No appearance by the Applicant

Decision

BACKGROUND

Application for patent 522421, together with a complete specification, was filed on 5 November 2002.

Letters patent were sealed on 9 June 2003.

Application for revocation was filed on 9 June 2004.

An amended application for revocation and a statement of case were filed on 5 August 2004. Grounds (b), (d), (e) - both limbs, (f) and (g) of section 21(1) were pleaded.

The patentee’s counterstatement was filed on 8 October 2004. Amendments to claims 4 and 5 were proposed conditional upon an adverse finding in respect of the original claim set. All grounds pleaded were denied by the patentee.

The applicant for revocation withdrew by way of a letter dated 29 November 2005. Both parties agreed to meet their own costs.

A supplementary counterstatement was filed on 21 July 2005 proposing amendments to claim 1 conditional upon an adverse finding against this claim.

The patentee asked to be heard before the Intellectual Property Office of
New Zealand (‘IPONZ’) issued a decision in the public interest.

EVIDENCE

Statutory declarations in support of the application for revocation were filed by the following persons:

• Jana BABOR, Searcher employed by A J Park, of Wellington (the declaration relating to availability of cited documents);
  
• Steipo Tony JUNKOVICH, Sharebroker, previously Group Manager of ASB Online and before that Manager Strategy and Ventures at ASB Online, of Auckland;
  
• Adam CLARK, Founder, Director and CEO of Mobile Commerce Limited, a mobile payment services and applications company, of Auckland;
  
• James Ross ANDERSON, Bank Executive who had held the position of Chief Manager, ASB Bank Contact Centre, of Auckland;
  
• Julian Tocker Barrett SMITH, General Manager for Datasquirt Limited, a Wireless CRM, text message solutions company, of Auckland;
  
• Peter James HUNTER, Account Director at Touchpoint Limited working within Multi Channel Marketing and SMS Channel Management on behalf of clients, of Auckland; and
  
• Kerry POLLOCK, Solicitor, of Auckland (this declaration relating to locus standi of the applicant).
  

Statutory declarations in support of the patent were filed by the following persons:

• Warren Gregory TOBIN, Patentee and Inventor named for the present patent, Co-Founder and Director of Txtcentre Limited, of Auckland;
  
• Anthony John BLACKHAM, Managing Director of XSOL Limited, an Auckland-based software company, of Auckland;
  
• Brian Terry EVANS, Product Manager for Ericsson NZ Limited and Ericsson Enterprise Systems Ltd, of Auckland;
  
• Stuart John WILSON, Executive Director of Sonic Mobile Limited, of Wellington;
  
• Elias Anastas KANARIS, Contact Centre Solutions Manager for Gen-I Limited, of Auckland;
  
• Elias Anastas KANARIS (second declaration);
  
• Craig Michael WALKER, Chief Technology Officer for NewsTech Limited, a software development company, of Wellington;
  
• David TEN HAVE, Software Engineer, of Wellington; and
  
• Brian Terry EVANS (second declaration).
  

No evidence in reply was filed by the applicant.

The patentee submitted that the Jurkovich, Clark, Anderson, Smith and Hunter declarations do not qualify as statutory declarations and are inadmissible. This is because each declaration ends with the phrase:

...I make this solemn declaration conscientiously believing the same to be true by virtue of the Oaths and Declarations Act 1957

[emphasis added]

To qualify as statutory declarations the patentee submitted that the phrase should in each case read ‘... to be true and by virtue of...’ [emphasis added]. The patentee stated that on the face of it this seemed to be nit picking, but the patentee pointed out that IPONZ has said that the wording must be correct or the declaration is inadmissible, and drew on the IPONZ practice note published in Journal No 1292 of December 1986, at pages 1234-38, relating to statutory declarations:

It is essential that the correct words are used; in particular the declaration should not be said to be “true by virtue of the Oaths and Declarations Act”. The omission of the word “and” between the words “true” and “by” will render the declaration inadmissible.

[bold emphasis added]

I do not really believe that evidence which has probative value and which appears was to have been properly sworn should be excluded because of a slight variation from the accepted wording. In saying this I do not wish it to be taken that the proper wording is to be trifled with and that any form of wording is permissible. The practice note referred to may have been an initiative by IPONZ to strongly indicate that declarations were to be prepared to a high standard.

LOCUS STANDI

The patentee pointed out that under sections 21 and 42 opposition or belated opposition is open to any person interested. The patentee submitted that the applicant had not established that it was a person interested. The patentee drew on Prima Technologies Limited and Others v Forlong & Maisey Limited (Decisions of the Commissioner, P01/2004, 5 January 2004) at page 3. The decision referred to Bamford’s Application [1959] RPC 66. In Bamford’s Application it was held that a person who lodges notice of opposition must have a real and existing interest, which might be injured if the patent is granted, at the time the notice is lodged.

The patentee also pointed out that Forlong & Maisey also refers to the British Manual of Office Practice (Patents) where it states, at paragraph 14,58, that if an opponent is found not to have locus standi then the opposition is deemed not launched. Hence, the patentee submitted, in this case the revocation action should be deemed not to have been launched. The patentee also submitted that if the applicant is found not to have locus yet the evidence is considered after the applicant has withdrawn from the case then the opposition is, in a round about way, taken as valid without any requirement for the applicant to show locus. This, submitted the patentee, further frustrated the words of the legislation and circumvented Parliament’s clear intention that there be locus.

The patentee recognised the public interest in IPONZ considering the evidence of an applicant who has failed to establish locus, and subsequently issuing a decision in the public interest. It is possible that an applicant for revocation may provide evidence that might successfully make out the case for revocation, yet may decide not to pursue the belated opposition, perhaps after reaching agreement with the patentee. Whatever is the situation, IPONZ has to consider the application, including any evidence, in the public interest.

I note also that it is open to a patentee to pursue the matter of locus of an applicant for revocation in interlocutory proceedings, although it is normal for locus to be decided at, and as part of, the substantive hearing.

The Pollock declaration states that ASB Bank Limited (ASB) conducts a wide range of services in the banking industry, some of which involve short message services (SMS) provided on cell phones and other mobile devices, such as its services provided under the BankDirect brand.

The declarant refers to a meeting he attended in December 2003 which was also attended by Linley Wood and Kevin Leith of ASB and Jo Skinner and Warren Tobin of Txtcentre. The declarant stated that he thought the meeting was going to be about whether ASB infringed the present patent. He deposed that Mr Tobin was not forthcoming about details of the patent and instead wanted to talk about business opportunities between Txtcentre and ASB.

The declarant expressed his surprise to read in the patentee’s counterstatement that the ASB ‘does not have, and has not demonstrated, a legitimate interest in working the invention covered by [the patent]’. As mentioned, he attended the meeting where Mr Tobin wanted to talk about business opportunities with ASB in view of his patent and in view of infringement of his patent.

The patentee’s comments on the Pollock declaration revolved around the view that the applicant needs to state that it wants to use the patent, that to demonstrate locus the declarant or ASB has to emphatically state that the ASB has an imminent desire to use the invention. It appears to me that there is no need to express a want or a desire to use the patent. It is sufficient that the applicant uses a call centre or call centres.

It seems to me that, amongst its range of services, the ASB provides services involving SMS provided on cellphones and other mobile devices and call centres, although the call centre aspect does not appear to be fully spelt out in the declaration or statement of case. It follows, I think, that any improvement, or alleged improvement, in the provision of these services could prejudice the ASB in its provision of customer service. It seems to me that the applicant, therefore, is a person interested in developments in the provision of phone communications including those involving call centres.

I believe my decision is supported by principles 3 and 4 of the four principles for deciding locus standi laid down in Mediline AG’s Patent [1973] RPC 91, at 97:

(3) If the opponent or applicant for revocation can show that he has some genuine interest which will be prejudiced and if the opposition or application to revoke is not frivolous, vexatious or blackmailing, then locus should be granted even if the patentee can throw some doubt on the exact extent of the opponent’s interest.

(4) It is in the public interest that genuine opposition [or] a revocation proceeding should be permitted, as normally an opponent or applicant for revocation assists the court or the Comptroller in ensuring that the scope of the patent attacked is properly examined and limited during the application and early stages of its life. The duty of the Comptroller, as a public officer in this connection, is well set out in Terrell, 12th edition, paragraph 439.

I accept that the applicant has locus standi.

PRIORITY DATES

This is not at issue.

AMENDMENT PROPOSALS

Section 40(1) relates to amendment of a specification after acceptance:

After the acceptance of a complete specification, no amendment thereof shall be effected except by way of disclaimer, correction, or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

I note that the amendment proposals were conditionally made. I draw the patentee’s attention to the IPONZ practice note in Journal No 1287 of July 1986, at page 714, relating to amendments proposed as part of opposition proceedings under section 21 and revocation proceedings under section 42:

Amendments proposed in Counterstatements

If an applicant/patentee wishes to submit amendment proposals to overcome at least some of the grounds of opposition, it is necessary that proposed amendments strictly comply with the requirements of s.40(1), and the supporting case law. The proposed amendments should preferably be shown on a marked up copy of the specification (or appropriate pages thereof) as accepted and published, in distinctive fashion, e.g. underlined, italics etc., to permit photocopying without loss of identity. Each proposed amendment must be identified as “disclaimer, correction or explanation”. It should be made clear in the counterstatement that the offer to amend is unconditional, and not dependant upon an adverse finding on the unamended specification. Amendment proposals will be the subject of careful scrutiny by this office. The effect of s.38(6) is to exempt the need for application under s.38 for amendments which do in fact go to the matters raised by the opponent.

[emphasis added]

Amendment proposals are to be unconditionally proposed. It is sometimes the case, where a hearing officer decides that an adverse finding does not apply to the whole of the scope of an invention claimed, that time may be allowed from the date of the decision for the applicant/patentee to propose suitable amendments for consideration (and time for the opponent or belated opponent to comment on any such proposals).

In the present case it appears that amendment is not necessary and I will not consider the proposals further.

NATURE OF THE INVENTION

The title of the specification is:

Communications Means.

The field of invention is described in the specification as follows:

The invention relates to a method of effecting telephonic communications. A preferred form of the invention involves a call centre which receives and processes mobile phone text messages.

An opening paragraph describes the field of invention:

It is known to use call centres as a central station for receiving and directing calls to organisations or individuals. It is generally the case that calls to a call centre are telephonic, and involve voice communications between a caller and an operator at a call centre. It is an object of at least one form of the present invention to provide an alternative means of communication involving a call centre, or to at least provide the public with a useful choice.

The main claim is claim 1 which reads:

A method of effecting communications, comprising the steps of:

1. taking text message calls at a text centre means wherein such calls are made by way of telephones,
   
2. determining the target address(es) of the calls from information contained in the calls, the identity of the target address(es) in each case being recorded in the text centre means against a telephone call centre or telephone call centres,
   

100. sending the text message calls to the call centre or call centres corresponding to the respective target address(es),
     

4. receiving the text message calls at the call centre or call centres as appropriate,
   
5. for each call centre processing each of the text message calls received there such that a future return call time is assigned to each of the text message calls, for each text message call automatically forwarding a return text message call to the telephone concerned, the return text message call containing details as to when a return telephone voice call will be made from the call centre to the holder of the telephone, and
   
6. in substantially each case the call centre concerned making the respective return telephonic voice call at the time indicated.
   

The remaining claims 2-9 depend from this claim. Claim 10 is a form of omnibus claim, although I note that the claim is not in the standard form for an omnibus claim, which would normally refer to drawings attached to the specification or to examples in the specification.

THE LAW

On any conflict of fact and expert opinion, the patentee drew attention to General Electric Company’s Application [1964] RPC 413 (approved in Beecham Group Limited v Bristol Myers Company (No2) [1979] NZLR 629 at 634) where Lord Diplock said:

The right principle is that if on the face of the written evidence filed there appears to be a bona fide conflict of fact or credible expert opinion upon a question on the answer to which the existence or non-existence of the ground for refusal specified ..... depends, the [Commissioner] should not exercise his jurisdiction to refuse the grant unless, after cross-examination of the witness if he thinks fit to order it, the conflict is clearly resolved in favour of the party opposing the grant.

The patentee submitted that the Commissioner should be satisfied beyond doubt that the Letters Patent ought not to have been sealed or the benefit of any doubt will be given to the patentee. The patentee noted Saxpack Foods v Watties Canneries (M454/85, Wellington Registry, 11 July 1988, unreported) where at pages 8-9 Ongley J stated:

I approach the proceedings upon the basis that the purpose of opposition proceedings is to clear the register of patents which are manifestly untenable. It is not to provide a method of disposing of truly contentious cases: per Buckley LJ, General Electric Co (Cox’s) Patents [1977] RPC 421, 437, where His Lordship stated the test to be applied in these terms:

Is it clear on the evidence before the Comptroller that, if the issue of obviousness (assuming that to be the ground relied on) were fought out in a full scale revocation action, the claims would be held bad for obviousness? If the answer is affirmative, then it is right that the patent should be killed in its infancy. If the answer is negative, the patentee should not be deprived of his patent without the protection of a full scale action.

The patentee noted that it is accepted law that the burden of making out a case in an application for revocation rests upon the applicant and there must be a very clear case that the patent should be revoked before the Commissioner will revoke the patent, as in Noton v Alister Bevin, recently quoted in Astra Aktiebolag’s Application (Decisions of the Commissioner, P28/2005, 25 October 2005) at 12-13:

I agree that the burden of proof in these proceedings is upon the applicant for revocation, who must make out a clear case on one or more grounds to succeed in this application.

PRIOR PUBLICATION – section 21(1)(b)

Section 21(1)(b) states:

That the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the priority date of the claim —

(i) In any specification filed in pursuance of an application for a patent made in New Zealand and dated within 50 years next before the date of filing of the applicant’s complete specification:

(ii) In any other document (not being a document of any class described in subsection (1) of section 59 of this Act)

The patentee noted that the test for prior publication is that set forth in the judgment of the English Court of Appeal by Sachs LJ in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 485:

The earlier publication of the patentee’s claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such at the relevant date.

... If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.

[emphasis added]

United States (US) Patent Specification 5742674 (Jain)

This document was available at IPONZ from 13 May 1998.

The document discloses an automatic call back system where a caller first places a call to another party. If the call is not answered the caller is given the option of setting up a call-back at a time when the called party is most likely to answer. The best call-back time (or best time to call - BTTC) is calculated from the history of the called party’s line activity. At the call-back time the original calling party is contacted by telephone and hears a pre-recorded message that the network is about to make the call back. A call is placed to the previously called party and, when they answer, the caller and called party are connected to one another.

The applicant drew what the patentee submitted were strained parallels between the integers of the patentee’s claim 1 and the integers of the disclosed method in the cited document. They include that the called party is equivalent to a call centre, that switching nodes connecting the two parties are equivalent to the text centre, that an initial address message from the originating local exchange carrier is equivalent to a text message, and that the transmitted BTTC is equivalent to the future return call of the patentee’s claim. I agree that the parallels are strained. In addition, the document does not mention text messaging at all.

I find the specification does not contain clear and unmistakable directions to do what is set out in claim 1 and hence does not prior publish the patentee’s claimed invention.

Patent Co-operation Treaty (PCT) Patent Specification WO 02/078304 (Softalk)

This document was available at IPONZ from 18 October 2002.

The document describes a system for initiating telephone calls by way of a text message or the like. In the words of the patentee, a text message is sent to a telephone service provider. The service provider forwards call information to a telephone network. The person originating the call is called and, when the call is answered, the target party is also called. The two parties are then connected to one another. The purpose of the system is to enable a person to send a text message to set up a call between a normally expensive-to-use telephone, such as in an hotel, and a called party. For example, the text message or similar sets up a call to the hotel telephone at a time specified in the text message. The caller answers the call to the hotel telephone and is then connected to the desired party. This avoids the charges that a caller would normally incur when using an hotel telephone.

The applicant drew what the patentee submitted were strained parallels between the integers of the patentee’s claim 1 and the integers of the disclosed method in the cited document. These include that the mobile switching centre, SMS server or the SMS gateway are the equivalent of the text centre of claim 1, that the message server and/or the telephone service provider are equivalent to the call centre of claim 1, that the abort time for a call placed is equivalent to a future return call time, and that in making the final call the public switched telephone network’s forwarding of the call set-up message to the mobile switching centre is equivalent to a text message. Again, I agree that the parallels are strained. In addition, the initiating caller does not receive anything like a return text message with details as to when a return voice call will be made.

I find that the specification does not contain clear and unmistakable directions to do what is set out in claim 1 and hence does not prior publish the patentee’s claimed invention.

The ground of prior publication is not made out.

PRIOR USE - section 21(1)(d)

Section 21(1)(d) states:

That the invention, so far as claimed in any claim of the complete specification, was used in New Zealand before the priority date of that claim

An IPONZ practice note, published in Journal No 1287 of July 1986, page 714, sets out what the opponent must do to prove this ground:

To succeed on this ground, an opponent must first establish that the alleged instance(s) of prior use was (were) not secret use(s) of the invention, as claimed. See the decision of the House of Lords in Bristol-Myers (Johnson’s) Application [1975] RPC 127, at 157, for a discussion on what constitutes public use, as opposed to secret use. The opponent must also establish, by evidence,

(a) what was used
(b) where it was used
(c) by whom it was used
(d) the date it was used
(e) where apparatus still extant may be inspected.

The applicant’s evidence falls short of meeting the five criteria, and, in the first place, there is nothing specifically pleaded in the application for revocation and in the statement of case. My attention was drawn by the patentee to the demonstrations from prospective vendors which are referred to in the Clark declaration, and to the fact that there are insufficient details of these demonstrations given in the declaration to establish any prior use of the patentee’s claim 1. In addition, it is not stated in the Clark declaration whether these demonstrations were confidential demonstrations or of an open nature.

The foregoing comments also apply to the instances of use referred to in the other declarations in support of the application for revocation

This ground is not made out.

OBVIOUSNESS - section 21(1)(e)

Section 21(1)(e) reads:

That the invention, so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step having regard to matter published as mentioned in paragraph (b) of this subsection, or having regard to what was used in New Zealand before the priority date of the applicant’s claim

The ground of obviousness has two limbs, one being based on prior publication, the other being based on prior use. Both limbs are raised in these proceedings. IPONZ practice note published in Journal No 1367 of April 1993, page 492, explained this as follows:

This ground has two separate distinct limbs, (a) obviousness and clear lack of inventive step, having regard to what has been published in New Zealand, before the priority date of a claim under attack, and (b) obviousness and clear lack of inventive step, having regard to what has been used in New Zealand, before the priority date of a claim under attack. It is not permissible to combine the two separate limbs. Note the use of the disjunctive “or” in the [section of the Act].

No instances of prior use have been established in these proceedings so that the second limb cannot be made out and will not be considered further.

The usual test for obviousness was that set out by Oliver J in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73, and followed in New Zealand by Gault J in Ancare v Cyanamid [2000] 3 NZLR 299 at 309 (paragraph 45):

There are, we think, four steps, which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention. Finally the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

The approach was summarised by the patentee as:

1. identify the inventive concept,
   
2. assume the mantle of the normally skilled but unimaginative addressee at the priority date and impute to him what was the common general knowledge in the art in question,
   
3. identify what if any differences exist between the matter as being “known or used” and the alleged invention, and
   
4. viewed without any knowledge of the alleged invention, do any of those differences constitute steps which would have been obvious to the skilled addressee or do they require a degree of invention?
   

The inventive concept involves at its most basic level the combination of features and actions set out in claim 1.

Teaching away

The patentee submitted that, as the invention related to the use of text messaging in a call centre environment, the primary question to ask is what was the perception of the call centre industry to text messaging at the priority date? If the evidence shows that the industry, in general terms, was not very open to the use of text messaging then it is hard to see how the unimaginative addressee would have decided to use text messaging at all. Even if the unimaginative addressee would have gone the way of text messaging it is important, submitted the patentee, to appreciate the immense leap forward that is present in suggesting the use of text messaging in the way set out in claim 1, as the claim defines something a lot narrower than simply using text messaging for a call centre.

The patentee noted that the unimaginative addressee has prejudices such that teachings away from an invention claimed can be seen as a defence to the charge of obviousness. The attitudes and perceptions of the unimaginative addressee were referred to in Dyson Appliances Limited v Hoover Limited [2001] EWCA Civ 623; [2002] RPC 22 at paragraphs 55 and 57 where it was held that the ‘mindset’ of those skilled in the field must be given due weight:

[55] Thirdly, Hoover submitted that it was wrong to impute to the skilled person an aversion to cyclones or an addiction to the use of filter bags. They submitted that the judge should have differentiated between commercial motives and technical considerations. In particular, he was wrong in paragraph 156 of his judgment to conclude:

156....Common general knowledge has both positive and negative aspects. I have so far considered under this topic, as is customary, only positive aspects of the knowledge with which the skilled addressee is to be imbued. In my view in certain cases (and I believe this to be one of them), negative aspects of knowledge must in approximation to reality, play their part. At the priority date of the Patent, I believe that such was the ‘mindset’ within the vacuum cleaner industry, no notional, right-thinking addressee would ever have considered the viability of purifying dirt-laden air from a vacuum cleaning operation, other than by means of using a bag or bag and final filter. For present purposes, the addressee is nonetheless deemed to have been presented with (in effect) three items of prior art wherein it is proposed to clean dirt-laden air by means not of bags but by cyclonic action alone. He is also assumed to take some interest in them however inimical the proposals may be to his likely way of thinking at the time. In terms of its impact on the issue of obviousness, I believe that this negative thinking which as Mr Kitchin suggested amounted to prejudice, would at least have caused the addressee to regard modification to any of these prior art proposals with considerable reserve if not overt scepticism. This likelihood must, I consider, be given due weight. In my view of the matter, I cannot think that any of the cited prior art would ex facie be likely to have led the addressee at the relevant date with any enthusiasm to effect the often substantial changes which would bring these proposals within a claim of the patent: see para.153. My view in this regard is bolstered (but not precipitated) by Mr Dyson’s evidence of what actually happened when he tried to interest the industry in Dyson I.

[57] I do not believe the judge fell into error in paragraph 156 of his judgment. The mantle of the skilled person is that of an actual skilled person. The purpose of assuming the mantle of the skilled person is to enable the decision as to what is obvious to be a decision based on actual facts. They include all the attitudes and perceptions of such a person.

The patentee submitted that in the present case the evidence showed that there was in fact an industry prejudice to, or teaching away from, the use of text messaging in a call centre environment:

• the Wilson declaration at paragraph 7 states that at November 2002 text messaging was an emerging technology and that to some extent it still is today; text messaging between software applications really took off in the last 18 months (the declaration is dated June 2005); in November 2002 text messaging was not taken seriously as a means of business communications and certainly not applied in the context of call centres; text telephoning was largely something for communication on a social level; in 2002 Mr Wilson consulted with Telecom, TelstraClear and Vodafone and the work he did together with those companies focused very much on handset to handset communications; and, the only mobile telephone applications that he knew of were ‘email to text’ and ‘web to text’;
  
• the Wilson declaration at paragraph 8 describes difficulties with text messaging at the priority date making it an unreliable means of communication for a call centre environment; telephone companies could not guarantee delivery of text messages; text messaging technology was in its developing stages at the time and the SMS texting channel was not intended as a fault-tolerant grade service; these difficulties resulted in a negative perception towards text messaging at the priority date; and, the perception was so negative that a mooted idea of a text channel for ‘111’ calls never got off the ground;
  
• the Wilson declaration at paragraph 9 discusses problems between Telecom and Vodafone as far as an interconnect agreement was concerned, so that up to and during part of 2002 it was not possible to communicate between the two companies’ mobile phones; this fuelled a negative, and lingering negative, perception about text messaging in business; and, the call centre products industry as a whole was developing telephone handsets and handset features rather than advanced applications for dealing with text messages;
  
• the Wilson declaration at paragraph 10 describes the technology of choice for use in call centres as being that of ‘interactive voice response’ (IVR) systems where a caller is greeted with a recorded voice message and is given instructions as to which keys of the telephone pad to press to get to the person they are after; and, the teaching was therefore away from text messaging as a call centre channel;
  
• the first Evans declaration at paragraph 4 describes the negative industry perception to text messaging, at the relevant date, which he noticed in his role at Ericsson; and, he declared that the industry was just not thinking along the lines of text messaging;
  
• the first Evans declaration at paragraph 5 states that IVR systems were standard for dealing with high volumes of calls at the relevant date and that these are still the main way of dealing with incoming calls at call centres today (declaration signed May 2005) including the call centres of the telecommunications market leaders Telecom and Vodafone;
  
• the first Evans declaration at paragraph 6 gives, as another standard way of dealing with call centre volumes of calls at the relevant date, the use of voice recording systems where the caller left a recorded message which was replied to by telephone at a later time;
  
• the second Evans declaration made after reading the patent specification, at paragraph 3, states, amongst other things, that claim 1 defines a concept that would have been seen as innovative back at 2 November 2002 and even afterwards. The reasons for this were that text messaging at the time was not a particularly well used means of communication from a business point of view and was very much a developing technology; there would have been very few, if any, good software applications that enabled businesses to use text messaging for dealing with customers, and he was not aware of any relating to the call centre industry; and, the volume of text messaging was not then what it is today, making it difficult for businesses to justify the expense of developing systems to interface with customers in that way;
• the second Evans declaration, at paragraph 4, states that the overwhelming majority of text messages were sent at a social level; and, there is more to claim 1 than just receiving call messages at a call centre; and
  
• the first Kanaris declaration states that at November 2002 call centres had little or no real regard for communications involving text messaging; the perception was that text messaging was not a mainline mode of communications; and, the declarant suggested this was because SMS messaging had relatively poor penetration in the US market at the relevant date (and until relatively recently) and call centre products trends tend to follow those in the US.
  

The patentee noted that there was nothing in the applicant’s evidence to refute this ‘teaching away’ that is to be found in the patentee’s evidence, and hence there must be at least some doubt about obviousness of the invention claimed as in the quote from General Electric Company’s Application above.

Evidence of inventiveness

The patentee referred to the following facts in the Tobin declaration which, it submitted, suggested that the invention claimed was in fact very inventive:

• in 2003 the invention won one of three finalist places in the ‘most innovative product’ category of the Westpac High-Tech Awards (Tobin paragraph 10);
  
• in 2004 the invention won one of three finalist places in the Ericsson Mobility Awards. One of the judging criteria was the ‘level of innovation and newness to the marketplace’ (Tobin paragraph 11);
  
• the patentee’s corresponding Australian application proceeded to grant for the same invention as claimed in the New Zealand patent application (Tobin paragraph 12); and
  
• the patentee’s corresponding United Kingdom has proceeded to acceptance for the same invention as claimed in the New Zealand patent application (and the patentee suggested at the hearing that by now the patent would have been granted).
  

There was also evidence as follows:

• the Blackham declaration, at paragraphs 2 and 4, states that the deponent has served on a judging panel for the Westpac High-Tec Awards since 1998; that the reason Txtcentre won, as above, with the invention claimed in claim 1 was its innovative use of phone texting to extend the capacity of call centre and self-service applications; and, the judging panel was impressed by the fact that the company had spotted an un-serviced niche market and had developed a technological product to fit it.
  

The patentee submitted that these are at least enough to enable the patentee to be given the benefit of the doubt when it comes to the inventiveness inquiry.

ASB’s evidence

The patentee submitted that the fact that the witnesses (except Mr Pollock) had read the patent specification before giving their opinion was tantamount to leading the witnesses, and that this impacted negatively on the credibility and usefulness of that evidence. In support the patentee drew on Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315; (2002) 56 IPR 248 at paragraph 45:

[45] The manner in which the evidence of some of the experts in the present case was brought into existence suggests that relatively little weight should be given to certain of that evidence. For example, witnesses were provided with a copy of the patent. They were either provided with a large number of other documents or found them in response to the task that was set them. That is hardly calculated to result in objective evidence as to what the hypothetical uninventive but skilled worker would have done. To give the patent to a prospective witness is tantamount to leading the witness.

[emphasis added]

It is correct, I believe, that the reading of the patent specification prior to giving evidence may taint evidence given subsequent to the reading of the specification and thus reduce its credibility and usefulness.

I note that the scope and utility of evidence from experts concerning the issues to be addressed in determining obviousness has been commented upon by the English Court of Appeal in SmithKline Beecham plc v Apotex Europe [2004] EWCA Civ 1568; [2005] FSR 23 at paragraphs 51-53:

[51] Before I go further, however, it is as well to remember what the key function of an expert witness in a patent action is - as I said in Technip SA’s Patent (para. 12):

Their primary function is to educate the court in the technology - they come as teachers, as makers of the mantle for the court to don. For that purpose it does not matter whether they do or do not approximate to the skilled man. What matters is how good they are at explaining things

[52] To that I would add this: although it is inevitable that when an expert is asked what he would understand from a prior document’s teaching he will give an answer as an individual, that answer is not as such all that helpful. What matters is what the notional skilled man would understand from the document. So it is not so much the expert’s personal view but his reasons for that view - these the court can examine against the standard of the notional unimaginative skilled man. There is an analogy here with the well-known Bolam test for professional negligence - what matters is not what the individual expert witness says he personally would have done, but whether the conduct said to be negligent falls short of what a reasonable professional would have done.

[53] Thus in weighing the views of rival experts as to what is taught or what is obvious from what is taught, a judge should be careful to distinguish his views on the experts as to whether they are good witnesses or good teachers - good at answering the questions asked and not others, not argumentative and so on, from the more fundamental reasons for their opinions. Ultimately it is the latter which matter - are they reasons which would be perceived by the skilled man?

The purpose of expert evidence is to explain to me the technology at the relevant date so that I can assume the mantle of the skilled addressee and determine whether or not that addressee would have required any degree of inventiveness to arrive at the claimed invention from what was known or used.

The patentee also pointed to the rather formatted look of the declarations in support of the application and that the witnesses did not attach any material to their declarations to verify what they suggested was common general knowledge at the relevant date.

In deciding whether or not to admit the applicant’s evidence I must also take into account the quotes from Young J in Amadeus Global Travel Distribution SA v Sabre Inc (unreported High Court Wellington, AP 126/02, 14 March 2003) at paragraph 28, by stating:

In balancing these issues, I consider the justice of the case demands the admission of the evidence. The decision to be made is frankly too important to be made without all the facts.

I need to have available to me the fullest information on which to make the decision in the public interest. I believe I can give appropriate weight to the evidence even though it may lack some credibility and usefulness.

The prior publications

These are:

US Patent Specification 5742674

This is considered above under ‘Prior Publication’.

PCT Patent Specification WO 02/078304

This is considered above under ‘Prior Publication’.

US Patent Specification 5991394

This document was available at IPONZ from 9 December 1999.

The document describes a method and system where a person sends a computer generated email to a telephone switching system. The switching system incorporates a telephone computer and a call distributor. The email mentions a call-back time and a return number etc. When the call-back time comes the switching system sets up a telephone call utilising a telephone network between a sales agent and the telephone belonging to the person.

The document does not mention a text centre receiving text message calls originating from telephones; the applicant suggested that the switching system is equivalent to the text centre and the call centre, however the patentee pointed out that in the present claims the two are separate and distinct; and, there is no description of a return text message advising when the call centre will make a return voice call.

US Patent Specification 6185194

This document was available at IPONZ from 27 February 2001.

This document describes a system and method for initiating a telephone call using the Internet. The customer uses a web browser to access the web site. The web site displays a list of businesses and the customer can set up a telephone call to them from the web site. By clicking on the desired business a call server sends data to a call centre. The call centre causes a party call to be made between the customer and the business by way of a telephone network. The call centre is a silent partner. The aim of the system is to enable a customer to call the business so that the business incurs the lowest possible charge for the call. This is achieved by using a number of call centres throughout a country. The call server selects the best call centre to use for the call depending on what rates are available between different cities etc, such as using a call centre in a time zone where the off peak rates apply at the time of the call.

The document does not describe, amongst other things, a call centre receiving text message calls which originated from telephones; a call centre determining target addresses from details contained in telephone text calls; and, a call centre assigning a return call time and forwarding a return text detailing when a return telephonic voice call will be made.

US Patent Specification 6456616

This document was available at IPONZ from 14 October 2002.

The document describes a system and method for sending data to a company by way of a cell phone or the like. The caller places a call which is picked up by an Intelligent Network Centre (INC). The first two digits in the called number indicate that the call is to transmit data, the rest of the digits in the called number represent information to be transmitted. An example is given where, following the first two numbers, the next three numbers refer to a tradesman job number, the next number refers to the number of spare parts used, and the next two numbers refer to the number of minutes the job took. The information is transferred to the company’s data system. A return message, which may be a text message, is sent to the caller confirming that the data transfer was successful.

The applicant suggested in its statement of case that the that the INC and/or the voice server are a text centre; that the company’s data system is equivalent to a call centre; and that the company’s data system formulates a return text message. The applicant would not appear to be correct on these points. In addition, the document is silent on steps e) and f) of claim 1.

None of the cited documents describe the claimed invention. There is nothing in the evidence of the applicant that shows how the skilled addressee would arrive at the presently claimed invention without the need for any inventive capacity. The applicant’s evidence appears to me to be largely ex post facto analyses of the invention claimed with the notions that the individual integers are known and could be put together obviously, and without any need for inventiveness. However, none of the evidence shows me how the skilled addressee would view the prior art and how the skilled addressee would, by obvious non-inventive means, arrive at the applicant’s claimed invention from that prior art. As an example of what I mean, I reproduce the relevant parts of one of these declarations put in as evidence in support of the application for revocation:

(b) I have reviewed the patent specification relating to [the patent] and can confirm, to the best of my knowledge information and belief and in my expert opinion that:

(i) all of the features claimed in the Patent (namely features 1 to 10 referred to on pages 7, 8 and 9 of the Patent) have been common general knowledge at the time of filing the patent (being 5 November 2002) and/or

(ii) the differences between what is claimed in the Patent and what was common general knowledge would have been obvious to a skilled person at the date of filing the patent; and/or

(c) My opinion is based on the following:

(i) That the methodology of sending an SMS text message in order to obtain a response has been well known since the invention of SMS Text messages and is a fundamental part of the normal course of using this functionality via mobile phone.

(ii) Delivering a message in order to get a response is obvious to any person who has used SMS Text, Voice Mail or any other of the host of message services available.

(iii) A large number of vendors and mobile network operators had approached ASB Bank suggesting we use SMS text messages to compliment our existing services prior to the date of filing the Patent.

(iv) The service described in the patent is not unique in my opinion.

The applicant has not made out a case for obviousness based on the published documents.

The patentee on the other hand has shown where the differences exist between the cited documents and has explained by way of evidence why these would not have been obvious to the skilled addressee. The patentee has also provided evidence as to both the state of text messaging at the relevant date and the inventiveness of the invention claimed, such as the awards the patentee has received for the invention.

There is also conflict of fact and credible expert opinion on the question of obviousness that would benefit from cross-examination of witnesses.

I find that the ground is not made out.

NOT AN INVENTION - section 21(1)(f)

Section 21(1)(f) states:

That the subject of any claim of the complete specification is not an invention within the meaning of this Act

The applicant has alleged that claim 1 is a mere collocation. I do not believe that this has been shown to be so. The integers making up the claim provide steps which have a working relationship to each other to provide something which I have found has not been shown by the applicant to have been prior published, prior used or obvious or clearly lacking an inventive step.

The applicant also argued that the invention claimed defines a mere scheme or plan. The claims provide a telecommunications messaging system where messages are received, processed and delivered. I believe this to be more than a mere scheme or plan.

The ground is not made out.

NOT SUFFICIENTLY AND FAIRLY DESCRIBED - section 21(1)(g)

Section 21(1)(g) states:

That the complete specification does not sufficiently and fairly describe the invention or the method by which it is to be performed

The patentee drew attention to Davison CJ in Noton New Zealand Limited v Alister Bevin Limited (1979) 1 NZIPR 236 at 238 where he quoted the following passage from the Assistant Commissioner in Alister Bevin Limited’s Patent 164293 (Decisions of the Commissioner, 14 August 1978, P08/1978), at pages 5-6, defining the scope of the ground of insufficiency:

An allegation of insufficiency is an allegation that the addressee of the complete specification will be unable to produce the subject of the principal or broadest claim by following the directions of the specification without further invention on the part of the addressee.

The patentee pointed out that the applicant’s evidence is silent on this issue.

The patentee has provided evidence in support of sufficiency by way of the Walker, Ten Have and second Kanaris declarations. I do not think I need go into the substance of these declarations. They clearly show that the invention claimed is sufficiently and fairly described in the specification. This sufficiency is, I think, evident from the specification alone.

The ground is not made out.

DECISION

I find that none of the grounds has been made out. The patent is appropriately sealed.

COSTS

Each party is to meet its own costs as agreed.

Dated this 20th day of February 2006

____________________________
A Hazlewood
Assistant Commissioner of Patents

A J Pietras & Associates for the Patentee
A J Park for the Applicant