Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 8) [2023] FCA 182

FEDERAL COURT OF AUSTRALIA

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 8) [2023] FCA 182 File number: NSD 200 of 2019

Judgment of: BESANKO J

Date of judgment: 8 March 2023

Catchwords: PATENTS — two patents for methods, apparatuses and systems for vehicle detection and determination of vehicle overstay in time-limited parking space — wireless communication between subterraneous detection apparatus and above-ground detection collection apparatus PATENTS — claims for infringement of claims against two respondents — infringement issues – cross-claim alleging invalidity — claims for additional damages PATENTS — infringement — proper construction of claims — whether the first respondent's vehicle overstay detection system used a wake-up signal — whether the claims include a method or system where the determination of vehicle overstay is made by the above-ground detection collection apparatus instead of the subterraneous detection apparatus PATENTS — infringement — whether first respondent is liable for infringing acts because it has authorised those acts, or because it is a joint tortfeasor in relation to those acts — limitation period and s 120(4) of the Patents Act 1990 (Cth) — authorisation under s 13 of the Patents Act 1990 (Cth) — construction of Deed of Release dated 18 June 2014 PATENTS — infringement — claims for additional damages — whether infringements have been flagrant — whether infringing conduct repeated without restraint — whether benefit obtained because of infringing conduct — requirement to consider all matters appearing under s 122(1A) of the Patents Act 1990 (Cth) PATENTS — best method — whether patentee has described best method known to it of performing the invention — alleged failure by patentee to disclose transceiver (ASTRX2 transceiver) used by it and known to be the best transceiver for working the invention — advantages of ASTRX2 transceiver — identification of the invention PATENTS — best method — whether patentee has described best method known to it of performing the invention — alleged failure by patentee to describe the antenna developed and used by it — nature and features of antenna — work performed by patentee in designing, developing and tuning antenna PATENTS — sufficiency — whether the patentee has fully described the invention — alleged failure to describe antenna PATENTS — entitlement — whether a person not named in the patent as an inventor was a co-inventor of the invention — whether work done by person with respect to antenna and Production Circuit Boards was a material contribution to the invention — whether, in any event, it would be just and equitable under s 138(4) of the Patents Act 1990 (Cth) to make an order PATENTS — inventive step — claim that invention obvious in light of common general knowledge — field of the invention — the content of common general knowledge — evidence of disadvantages of existing methods of detection of vehicle overstay — expert evidence in the field of electronic engineering — whether skilled addressee would be led directly as a matter of course to the invention PATENTS — fair basis — whether claims not involving a wake-up signal fairly based on matter in the specifications of the patents — test for fair basis — relevance of previous decision of this Court in Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; (2013) 101 IPR 496 PATENTS — false suggestion and misrepresentation — whether patents or claims in patents obtained by false suggestion —relevance of position taken by Commissioner of Patents PATENTS — lack of clarity and failure to define the invention — whether claims in First Patent which do not require vehicle overstay to be determined by the subterraneous detection apparatus lack clarity and fail to define the invention