In a recent update to a lengthy battle over car parking technology used by the City of Melbourne, SARB Management Group Pty Ltd (SARB) has scored a partial win over rival company Vehicle Monitoring Systems (VMS) on appeal in Full Court of the Federal Court of Australia.
At trial (Vehicle Monitoring Systems Pty Ltd v SARB Management Group [2023] FCA 182), Besanko J found that three versions of SARB's parking overstay detection system infringed two VMS patents and that SARB's invalidity challenges to those patents failed on all grounds.
On appeal, SARB challenged the finding that the third (and most recent) version of its overstay detection system infringed VMS' patent 2005243110. SARB also appealed the trial judge's findings that VMS' patents did not fail to disclose the best method known to VMS of performing the invention at the time of filing.
SARBS's appeal on infringement was successful. Justices Burley, Jackson and Downes found that Justice Besanko had erred in his construction of Patent 2005243110, and that the relevant claims did not encompass a system where vehicle overstay is determined by a data collection apparatus (as occurred in SARB's Pinforce 3).
On other hand, SARB's appeal on best method was unsuccessful. Notably, SARB alleged that at the time of filing, the inventor of the VMS patents had identified a transceiver – called the ASTRX2 – for use in the parking overstay detection system claimed in the patents. The ASTRX2 could 'wake itself up' to listen for a data collection apparatus, without the need for an external device like a microcontroller to turn the receiver on, which provided a marked advantage over other transceivers in terms of power consumption. The ASTRX2 was not mentioned in VMS' patent specifications – instead, they referred to a standard transceiver called the Micrel MICRF501.
Despite this, the Court of Appeal upheld the trial judge's finding that VMS had not failed to disclose best method in its patents. The Court found that the patents disclosed the parameters required to be met by a transceiver for use in the wake-up scheme, and that it had not been established that the inventor knew of a more sophisticated wake-up scheme which was not disclosed, or that the parameters disclosed in the patents were not the best method or performing a wake-up scheme. It also noted that the invention claimed in the patents was a parking overstay detection system including a wake up scheme – it was not a particular type of receiver.
The Full Court's decision provides helpful clarification of the principles of best method, underscoring that Courts will approach this ground by reference to the proper characterization of the invention described in the claims, focusing upon the features (rather than embodiments) described in the patent specification.
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