Electronic Tax-Free Shopping Ltd v Fexco Merchant Services

Background 5 In order to understand the context in which the present application is made, it is necessary for me to descend to some matters of detail. 6 Originally, there were two appeals before the Court relating to three decisions of a delegate of the Commissioner (the delegate). 7 The first appeal (i.e., the present proceeding NSD 1517 of 2007) was from a decision of the Commissioner given by the delegate on 13 July 2007. This decision upheld oppositions to the parent application. 8 The second appeal (NSD 2247 of 2011) was from two decisions of the Commissioner given by the delegate on 22 November 2011. These decisions refused amendments to: the complete specification filed in respect of the parent application, which had been advertised as accepted on 10 July 2003 (the accepted parent specification), and the complete specification filed in respect of Patent Application 2003252928 (the divisional application), which had been advertised as accepted on 15 November 2007 (the accepted divisional specification). 9 The parent application and the divisional application were for standard patents. 10 The appeals were brought pursuant to s 104(7) of the Act in the form it took prior to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act). 11 On 4 May 2012, I made an order to the effect that all issues of construction of the accepted parent specification to be determined in the first appeal, insofar as and to the extent that those issues also concerned the determination in the second appeal of the allowability of the proposed amendments, be heard and determined: separately from and before all other issues in the first appeal (including all other issues of construction of the accepted parent specification that might arise for the purpose of determining the first appeal), and together with the second appeal, with evidence in one appeal being taken as evidence in the other appeal. 12 The first appeal was otherwise stayed pending determination of the second appeal. 13 The matter proceeded to hearing on this basis on 10, 11, 12 and 14 March 2014 (the 2014 hearing) and culminated in judgment being given on 6 February 2015: Mainline Corporate Holdings Ltd v Fexco Merchant Services (No 2) (2015) 110 IPR 490; [2015] FCA 41 (the second appeal reasons). 14 The focus of the 2014 hearing was the allowability of the proposed amendments to the accepted parent specification and the accepted divisional specification. To the extent that this involved matters of construction that were common to the first appeal and the second appeal, it was accepted that the Court's findings would apply to the determination of the first appeal. 15 I concluded that the amendments that were then proposed were not allowable and that the second appeal should be dismissed: [180] of the second appeal reasons. Orders were made accordingly. Following the dismissal of the second appeal, the applicant filed the present application in this proceeding (i.e., in the first appeal).

The invention described in the accepted parent specification 16 The accepted parent specification is entitled "Dynamic currency conversion for card payments systems". It describes the invention as relating to card payment systems for use in a multi-currency environment. The accepted parent specification says that the invention provides systems and methods for identifying an appropriate currency for individual transactions conducted using a card payment system. The systems include those relating to the use of credit cards, charge cards and debit cards. The context provided by the accepted parent specification is a transaction where the cardholder presents his or her card at the point of sale to a merchant for the payment for goods or services. 17 The accepted parent specification points out that, in general, transactions involving a card payment are conducted in the currency of the merchant. However, this is said to be inconvenient for cardholders travelling abroad if they are unsure of the exact value of the transaction in their own currency. Other disadvantages are discussed. 18 The accepted parent specification says that it would be advantageous if a cardholder could view and/or make payments in his or her home currency rather than the currency of the merchant with whom the transaction is being conducted. Further, the accepted parent specification says that it would be advantageous if the currency could be determined at the point of sale automatically, using only a payment card's details. 19 At the 2014 hearing, the applicant and the respondents advanced competing interpretations of the invention described in the accepted parent application. Before dealing with these competing interpretations, it is necessary for me to record, firstly, the role played by the accepted parent specification at the 2014 hearing and then, secondly, to note briefly some concepts and terms which were of significance and remain so. 20 When considering the successive and cumulative requirements of s 102(1) and s 102(2) of the Act in relation to an accepted complete specification that has already been amended (as is the case here), it is important to distinguish between the form of the complete specification as filed (meaning, as initially or originally filed) and the form of the (amended) complete specification that is sought to be further amended. 21 Notwithstanding the importance of this distinction, at the 2014 hearing the parties were prepared to treat the description of the invention in the accepted parent specification, and the description of the invention in the parent specification as filed, as materially the same. 22 Thus, for the purposes of the 2014 hearing and the appeal reasons, the accepted parent specification became the primary focus of the analysis of the invention as described. 23 As to concepts and terms, I refer, firstly, to the concept of a "Bank Identification Number" or BIN. Typically card schemes and card companies employ a numbering structure for cards to ensure consistency and efficiency in operations. This structure is governed by a set of agreed rules which must be followed by the issuer of the card (i.e., the bank, institution or card company that provides cards to consumers to allow them, as cardholders, to make purchases at merchants accepting that card) and by the acquirer (i.e., the bank, institution or card company that processes payments for the merchant). Typically the issuer will produce cards with a total number length of between 13 and 16 digits. Generally speaking, the first six digits of the card is the BIN. The last digit is a check digit, which is calculated using the other card digits. It provides error detection in transaction message processing. The digits from and including, say, the seventh digit up to and including the penultimate digit are the account numbers given by the issuer for the discrete cards that are issued. 24 Next, the accepted parent specification uses the terms "identifier code", "issuer code" and "issuer identifier code" when describing how an extracted code from the payment card details is used, according to the invention, for the purposes of automatically setting the currency for the transaction with the merchant. There is a lack of consistency and a consequent degree of confusion in the use of these terms in the accepted parent specification which is a source of difficulty in identifying the invention described. This provided the occasion for the parties to advance their competing interpretations of the invention described. 25 At [71]-[72] of the second appeal reasons, I summarised the applicant's interpretation as follows: 71 In substance, the applicant contends that the accepted parent specification discloses an invention which distinguishes conceptually between, on the one hand, an identifier code extracted from the payment card details and, on the other hand, an issuer code or issuer identifier code. The applicant contends that the accepted parent specification uses the terms issuer code and issuer identifier code interchangeably. The applicant contends that although, as a matter of fact, the identifier code and the issuer code (or issuer identifier code) may involve the same number of digits with the same numerical sequence, this is not necessarily the case. In implementing the invention, the respective lengths of the identifier code and the issuer code (or issuer identifier code) may vary. However, the person skilled in the art would recognise that, in order to implement the invention, the identifier code must be at least as long as the issuer code. 72 The applicant contends that the accepted parent specification describes the issuer code (or issuer identifier code) as an important component of the invention, called the bank reference table (the BRT). The BRT contains a list of issuer codes (or issuer identifier codes). Each issuer code (or issuer identifier code) is associated with a particular currency - the cardholder's currency. Thus, when the identifier code (which is extracted from the card) is mapped to an issuer code (or issuer identifier code) in the BRT, which associates the issuer code (or issuer identifier code) with a particular currency for the cardholder's account (i.e. the cardholder's currency), the cardholder's currency is set as the currency for the transaction. If the identifier code is not mapped to a corresponding issuer code (or issuer identifier code) in the BRT, the currency for the transaction will be the merchant's currency. 26 At [73] of the second appeal reasons, I summarised the then respondents' competing interpretation as follows: 73 In substance, the respondents contend that the term "issuer code" must be a code that determines the "issuer", and that the terms "identifier code", "issuer code" and "issuer identifier code" are used in the accepted parent specification interchangeably. According to the respondents, there is no conceptual difference between these codes. They are, for the purposes of the invention, one code. Moreover, this code is the issuer's BIN. The BIN is referred to elsewhere in the evidence, including in International Standard ISO/IEC 7812-2, as an Issuer Identification Number (IIN). As at the priority date, the BIN/IIN was the only known code "in the card payment industry" that identified the issuer of the card. 27 At [76] of the second appeal reasons, I recorded the fact that the respondents' witness, Mr Ingham, considered that the BRT of the alleged invention was nothing more than a BIN table. However, I noted that, in final submissions, the respondents did not advance that specific interpretation, but another interpretation, which I summarised as follows: 76 Mr Ingham considered the BRT of the alleged invention to be nothing more than a BIN table. However, in final submissions, the respondents did not advance that specific interpretation. The respondents' case is that the invention disclosed and described is one in which the issuer has determined that it will issue cards for one particular currency only, which will be "its" currency. The respondents accepted that there is a conceptual distinction between a BIN table and the BRT of the invention. Nevertheless, the respondents contend that the issuer code (or issuer identifier code) and the identifier code are one and the same thing, which is, in fact, the BIN that has been allocated to the issuer by a particular card scheme or card company. In this way, the invention is one in which, by reference to the BIN, expressed in the BRT, the associated currency is the issuer's currency, which is set as the currency for the transaction. Thus, on the respondents' case, if it be appropriate to speak of the cardholder's currency, that currency is the issuer's currency. By this reasoning, the respondents say that the invention, if there be one, is the method or system that automatically sets the currency for the transaction to the issuer's currency, which the respondents also described as the issuer's "domestic" or "home currency". It is not a method or system that accommodates a range of different currencies for cards issued by the one card issuer. 28 I then noted (at [77] of the second appeal reasons): 77 The respondents submitted that the key issue in dispute is whether, as they contend, the accepted parent specification (and, by implication, the parent specification as filed) discloses a method for automatically determining only the currency of the issuer (i.e. the issuer's domestic or home currency), based on the issuer's BIN or whether, as the applicant contends, the accepted parent specification (and, by implication, the parent specification as filed) discloses a method for automatically determining the currency of the cardholder (i.e. the currency of the cardholder's account with the issuer), which may be different to the domestic or home currency of the issuer. There is a further refinement to the applicant's contention, namely that the accepted parent specification (and, by implication, the parent specification as filed) discloses that, for a given range of card numbers assigned to an issuer, the issuer can, within the range, issue cards for different currencies, each card having its own associated currency, which is not necessarily the issuer's home or domestic currency. 29 I reached the following conclusions: 122 The accepted parent specification and the parent specification as filed each disclose and describe a payment card method or system in which the currency automatically set for the transaction is the currency associated with the card itself. If there is no currency associated with the card, the transaction will proceed in the merchant's currency. 123 The specifications use a variety of expressions, including "the currency of a cardholder", "the card issuer's currency", "the currency of payment of cardholder's accounts of the issuer", "the currency of the payment cardholder's account", "the currency of the cardholder's card", "the currency of a card", and "the cardholder's currency". The accepted parent specification also refers, in a number of places, to the card having "an associated currency". Despite the use of these various expressions, there is no doubt that the accepted parent specification and the parent specification as filed disclose and describe an invention in which only one currency is associated with the range of card numbers assigned to an issuer. Considered at this level of generality, it matters little whether the currency associated with the card is called, as the respondents contend, the issuer's currency or, as the applicant contends, the cardholder's currency, or something else. 124 I am not persuaded that the accepted parent specification or the parent specification as filed prescribe that the currency associated with the card must be the domestic or home currency of the issuer, although there are indications in each specification that this could be the alternative currency to the merchant's currency. Underpinning the respondents' submission that the alternative currency to the merchant's currency must be the domestic or home currency of the issuer is their related submission that the identifier code, the issuer code and the identifier issue code are conceptually the same and must be, in fact, the issuer's BIN. 125 For the reasons I have given above, I am satisfied that, at the priority date, the person skilled in the art would understand the accepted parent specification and the parent specification as filed as disclosing and describing a payment card method or system in which: • the issuer code and the issuer identifier code are the same conceptual entity; • the identifier code, on the one hand, and the issuer code/issuer identifier code, on the other hand, are conceptually distinct; • the identifier code is not restricted to a BIN, and • the issuer code/issuer identifier code is not restricted to a BIN. 126 Thus, at the priority date, the person skilled in the art would have understood that the payment card method or system is not one in which the currency associated with the transaction, and hence associated with the card, as an alternative to the merchant's currency, is necessarily the domestic or home currency of the issuer. It may be another currency. 127 Nevertheless, at the priority date, the person skilled in the art would have understood that there is only one currency for or associated with: • the identifier code; • the issuer code/issuer identifier code, and • the range of card numbers assigned to the issuer, and that this currency is the only alternative to the merchant's currency.

The amendments as then proposed 30 There is little point in me describing in any detail the amendments that were then proposed. However, it is necessary for me to recapitulate, briefly, my reasons for refusing those amendments. 31 At [154] of the second appeal reasons, I noted that if the amendments, as then proposed, were directed merely to standardising the text of the accepted parent specification and/or to providing a more detailed description of the invention disclosed and described therein, then there would be little room to argue that the invention described by the amendments was not the invention disclosed in the parent specification as filed. By way of example, I referred to the fact that standardising expressions such as "issuer code" and "issuer identifier code" to, simply, "issuer identifier code", or expressing the relevant currency associated with the card transaction consistently, would raise little debate. I concluded, however, that the amendments as then proposed went much further than this. I saw those amendments as working a subtle but nevertheless significant conceptual change. Specifically, the identifier code would no longer be the portion of a card number which "distinguishes between the issuers" but would become the portion of a card number which "distinguishes between currencies of cardholder [or cardholders'] accounts". I concluded that the conceptual shift from the identifier code being one that distinguishes between issuers to one that distinguishes between currencies was a step change that assigned a new function to that code. The consequence was that an issuing bank could use portions of the range of card numbers assigned to them to issue cards to customers for a number of different currencies, not merely one currency for that range of card numbers. This would have been contrary to my construction of the accepted parent specification, which described only one currency that can act as an alternative to the merchant's currency, not a possible range of currencies for the assigned card numbers. 32 I therefore concluded at [165]-[166] of the second appeal reasons: 165 The conceptual change from the identifier code functioning to distinguish or, perhaps, functioning only to distinguish, between issuers, to one that distinguishes between currencies of payment of cardholder or cardholders' accounts, affects how the expression "identifier code" is to be understood within the claims following amendment. This change gives the claims a different meaning. 166 It follows that those amendments which provide for, or are implicated in, this conceptual change would result in the specification claiming matter not in substance disclosed in the specification as filed. Thus, these amendments are not allowable, by dint of s 102(1) of the Act. 33 So far as the requirement of s 102(2)(a) was concerned, I concluded that the "identifier code" post-amendment would not be the same as the "identifier code" pre-amendment and that, for that reason, it could not be said, as a matter of substance, that this "new" invention fell within the scope of the claims of the accepted parent specification, even though a method or system of dynamic currency conversion would be claimed in which the currency for the transaction would be set to a currency other than the merchant's currency. The delegate had come to the same view. 34 So far as s 102(2)(b) of the Act was concerned, I was satisfied that, to the extent that the proposed amendments used consistent expressions to distinguish between the "identifier code" and the "issuer identifier code", the amendments were clear. However, it was not clear whether the "identifier code" must also function to distinguish between issuers as well as functioning to distinguish between currencies. Moreover, it was not clear whether the identifier code, as a portion of the card number, was restricted to the leading digits of that number. Similarly, it was not clear whether the issuer identifier code was limited to all or some portion of the identifier code, as opposed to some other sequence of digits to which the identifier could be mapped. I concluded that these questions (and perhaps others) were not resolved by the then proposed amendments. The consequence was that the invention was not fully described as required by s 40(2)(a) of the Act, having regard to the requirement of s 102(2)(b) of the Act.

The present application 35 The Statement of Grounds and Particulars filed by the applicant on 10 July 2015 in support of its amended interlocutory application, categorised the proposed amendments as follows: Category "A" - proposed amendments inserting the term "automatically" into the claims and body of the specification. Category "T" - proposed amendments to correct mistakes in, and introduce formatting changes to, the accepted parent specification. Category "I" - proposed amendments that standardise the expressions "issuer code" and "issuer identifier code" to, simply, "issuer identifier code". Category "C" - proposed amendments to express the relevant currency associated with the card transaction, and hence the card, consistently. 36 The applicant does not persist with amendments of the kind previously rejected - in other words, those amendments which provided for, or were implicated in, the conceptual change with respect to the identifier code, to which I have referred. 37 The applicant also seeks to amend the accepted parent specification by including what it described as "four additional narrower claims". It says that these claims are sought to be added "out of an abundance of caution" in light of the decision in Research Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378; [2014] FCAFC 150.

Relevant legislation and legal principles 38 Section 105(1A) of the Act provides: Order for amendment during an appeal (1A) If an appeal is made to the Federal Court against a decision or direction of the Commissioner in relation to a patent application, the Federal Court may, on the application of the applicant for the patent, by order direct the amendment of the patent request or the complete specification in the manner specified in the order. 39 This provision applies in respect of all requests made after the commencement of Schedule 3 of the Raising the Bar Act to amend patent applications. 40 In Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039 at [5], I noted the reason why s 105(1A) was introduced: 5 Section 105(1A) of the Act was introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) to address the problem that, in an appeal from a decision of the Commissioner, the Court was confined to considering the very same subject matter that was before the Commissioner. Thus, in an appeal from a decision of the Commissioner in opposition proceedings, in which the opposition was successful but the patent applicant was afforded an opportunity to propose amendments to the complete specification to overcome the objections made (as here), the Court, when considering the appeal, was limited to dealing with the specification in the form it took at the hearing before the Commissioner and could not take into account amendments subsequently proposed by the patent applicant, even when those amendments would overcome the grounds of objection that had been found: see the discussion in New England Biolabs Inc v F Hoffmann-La Roche AG (2004) 141 FCR 1 at [44]-[47]. This limitation on the exercise of the Court's original jurisdiction to hear such appeals added complexity to the appeals process and to the resolution of opposed patent applications. Section 105(1A) addresses this problem by giving the Court power to consider and decide upon any amendments proposed by the patent applicant while the appeal is on foot. 41 There are two additional matters in relation to s 105 of the Act that I should mention. 42 The first is that the Commissioner is entitled to appear and be heard on an amendment application. The Commissioner can also be directed to appear: s 105(3). As I have noted, the Commissioner indicated at an early stage the intention not to appear or be heard on the present application. Correspondingly, I have not directed the Commissioner to appear. 43 The second matter is that the Court should not direct an amendment to be made that is not allowable under s 102 of the Act. At [128]-[134] of the second appeal reasons, I discussed the legal requirements for amendment, including by reference to my own judgment in Bristol-Myers Squibb Co v Apotex Pty Ltd (2010) 87 IPR 516; [2010] FCA 814 at [38]-[40]. I will not repeat that discussion in these reasons. 44 The only additional matter I note is that, for the purposes of this application, s 102 applies in the form it took before the amendments introduced by the Raising the Bar Act. 45 To summarise, an amendment of a complete specification: is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed: s 102(1); is not allowable after the relevant time (i.e., after acceptance) if, as a result of the amendment, a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment (s 102(2)(a)) or the specification would not comply with s 40(2) or (3) of the Act (s 102(2)(b)).

The Proposed amendments 46 As I have noted, the proposed amendments are detailed in Parts 1 and 2 of Exhibit B. 47 Part 1 details 209 amendments, according to the categories identified above. It would serve no useful purpose for me to describe the proposed amendments in any greater detail in these reasons. 48 Part 2 introduces four new claims: a data processing method (claim 38); a system for use with a charge, debit or credit card transaction between a merchant and cardholder (claim 39); a computer program encoding a set of computer instructions to determine a currency for association with a card transaction (claim 40); and a computer usable storage medium encoding instructions for determining a currency for association with a transaction between a merchant and a cardholder (claim 41). 49 Helpfully, the applicant has prepared a marked-up version of the accepted parent specification showing the amendments detailed in Parts 1 and 2 of Exhibit B: Exhibit C. 50 The applicant argues that the proposed new claims are based on the matter described in the accepted parent specification, particularly in the following passages of Exhibit C: page 19, lines 4-27; page 13, lines 17-29; page 14, lines 9-16; page 16, lines 12-16; and page 17, lines 13-16 and lines 19-34. 51 I have considered the amendments detailed in Exhibit B in conjunction with the marked-up version of the accepted parent specification in Exhibit C. I am satisfied that all amendments are allowable under s 102 of the Act. 52 In its submissions, the applicant raised the question of the discretionary nature of the power to direct an amendment under s 105(1A). The applicant distinguished the operation of s 105(1A) from the discretionary exercise of power by the Court to direct amendments of a patent request or a complete specification in court proceedings. Speaking of that power, Emmett J in Les Laboratoires Servier v Apotex Pty Ltd (2010) 273 ALR 630; [2010] FCAFC 131 said (at [59]): 59 The underlying purpose of the power conferred by s 105 is to allow a patentee to validate what would otherwise be an invalid or partially invalid patent. It is a power conferred on the Court for the benefit of the patentee. However, the exercise of power in favour of the patentee is an indulgence. The rationale underlying the Court's discretion to refuse permission to amend is that it is the duty of the Court to protect the public from abuse of the monopoly conferred by the grant of a patent. Where a patentee has claimed a monopoly over an area that is unjustifiably wide, research and experiment that might otherwise have been carried out might be deterred. That is against the public interest. On the other hand, where there has been no abuse of the monopoly, there would be no reason to refuse an amendment in order to protect a patentable invention that would otherwise be unprotected. It is in that context that the conduct of a patentee is relevant. If a patentee persists in defending or asserting claims that the patentee knows are unjustifiably wide, the implication is that the patentee is claiming to own something that really belongs to the public. By delaying too long in seeking to amend, the patentee may have effectively persisted in maintaining claims that the patentee knows are unjustifiably wide (see Vector Corp v Glatt Air Techniques Ltd [2007] RPC 255 at 279-280). (Emphasis added.) 53 The applicant argued that the rationale underlying the Court's discretion to refuse amendment under s 105(1) is not a rationale that can be applied to the power of amendment contained in s 105(1A) because: no monopoly is conferred by a patent application and hence no abuse of monopoly can arise; and s 105(1A) was introduced by the Raising the Bar Act to overcome the difficulty of amending a patent application in the context of an appeal from the Commissioner's decision. 54 I do not feel that it is appropriate that I should embark on an analysis of the likely or possible differences between the exercise of power under s 105(1A) and the exercise of power under s 105(1) of the Act, given that I have no contradictor before me on that question or, indeed, on the application to amend more generally. Nevertheless, I think that the context in which the power under s 105(1A) comes to be exercised is quite different to the context in which s 105(1) comes to be exercised and that there is much to be said for the proposition that many of the considerations usually taken into account when exercising the Court's discretion under s 105(1) (see, for example, the summary in Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (2012) 99 IPR 59; [2012] FCA 1510 at [160]-[164]) are not relevant to the operation of s 105(1A). It is, perhaps, sufficient for me to note further that, absent any opposition to the present application, I can see no discretionary reason to refuse the proposed amendments.

Conclusion and disposition 55 Subject to one further amendment concerning proposed claim 40 (substituting the word "determining" for the word "determine"), I will direct that the accepted parent specification be amended in accordance with Part 1 and Part 2 of Exhibit B. 56 I understand that, by directing these amendments, the dispute between the parties in this proceeding will have been resolved for all practical purposes. However, the appeal will still remain on foot. The applicant should now liaise with any remaining party to the appeal and provide, within 7 days and in agreed form (if required), a draft of any proposed final order(s) that should now be made. I certify that the preceding fifty-six (56) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.