Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd... [2020] FCA 6 | Case summary

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd... [2020] FCA 6 | Case summary | Zoe

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Introduction 1 The applicant, Vehicle Monitoring Systems Pty Limited (VMS), sues SARB Management Group Pty Limited (SARB) and the City of Melbourne (Melbourne) for patent infringement. 2 VMS alleges that, since at least October 2007, SARB has exploited vehicle detection sensor units (the PinForce Sensors) and vehicle detection systems (the PinForce Systems). The pleaded forms of exploitation are: making; offering to make; selling or otherwise disposing of; offering to sell or otherwise dispose of; supplying; using; offering to use; keeping for the purposing of doing all the aforementioned acts; and authorising local government councils (including Melbourne) to use, the PinForce Sensors and the PinForce Systems. 3 It also alleges that, amongst other things, SARB has, since at least 2009: used; offered to use; and authorised others (including Melbourne) to use the PinForce Sensors and the PinForce Systems in methods for identifying overstay of a vehicle in a parking space (the PinForce Methods). 4 VMS alleges that, since at least August 2011, Melbourne has used, and kept for the purpose of using, the PinForce Sensors and the PinForce Systems, and used them in the corresponding PinForce Method. 5 VMS alleges that these various acts infringe Patent No 2005243110 (the 110 patent), the complete specification of which was published and became open to public inspection on 24 November 2005, and Patent No 2011204924 (the 924 patent), the complete specification of which was published and became open to public inspection on 11 August 2011. Each specification is entitled "Method, apparatus and system for parking overstay detection". In relation to SARB, VMS also alleges that it has procured, induced or joined in a common design with others to exploit the invention as claimed in the 110 patent and the invention as claimed in the 924 patent. 6 This proceeding arises against the background of proceeding NSD 395 of 2011 (the first proceeding) in which VMS sued SARB for infringement of an innovation patent, Patent No 2010101354 (the 354 patent). One of the infringing acts alleged against SARB in that proceeding was that it had exploited a product referred to as the PinForce Sentinel VDU Product, including by supplying the product to Melbourne, and had authorised Melbourne to use the product in a method for identifying the overstay of a vehicle in a parking space (referred to as the PinForce Sentinel Method). 7 The complete application for the 354 patent was filed on 2 December 2010 as a divisional application of Patent Application No 2008200089 (the parent application). The parent application was filed on 8 January 2008 as a divisional application of Patent Application No 2005243110 (the grandparent application), but lapsed on 31 July 2011. The grandparent application was filed on 9 May 2005 and matured into the 110 patent. 8 The complete application for the 924 patent was also filed as a divisional application of the parent application. 9 When the first proceeding was commenced on 5 April 2011, the 110 patent was then in force. It had been granted on 13 March 2008. Notwithstanding the acts of infringement relied on with respect to the 354 patent, VMS did not allege that SARB had also infringed the 110 patent. Nonetheless, the 110 patent assumed importance in the first proceeding in relation to a dispute concerning the priority date of the claims of the 354 patent. 10 The first proceeding came before me for a liability hearing in 2012. On 21 May 2013, I made declarations to the effect that SARB had infringed the claims of the 354 patent, prior to its expiry on 9 May 2013. The making of the declarations was based on reasons for judgment published on 3 May 2013 (Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; 101 IPR 496) and reflected the parties' agreement as to the orders that should be made to give effect to those reasons. The declarations included a declaration that SARB had infringed the 354 patent by authorising others to use the PinForce Sentinel VDU Product and the PinForce Sentinel Method. Other orders were made on that day, including an order that the proceeding be listed for directions in respect of all issues that remained to be heard and determined in the proceeding. 11 On 4 June 2013, SARB filed an appeal. The appeal was heard by a Full Court but, before judgment was given, the parties entered into a Deed of Release, dated 18 June 2014, by which they settled VMS's infringement claims. Pursuant to that settlement, SARB paid VMS a sum of money referred to in the Deed as the Settlement Amount, and VMS released SARB from various claims. I will discuss the Deed of Release in greater detail in a later section of these reasons.

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The relationship between the patents 14 As I have noted, the 110 patent, the 924 patent, and the 354 patent are related. The 924 patent and the 354 patent were granted on respective divisional applications of the parent application, and the parent application was a divisional application of the grandparent application, which matured into the 110 patent. 15 There is a close correlation between the claims of the 354 patent and certain claims of the 110 patent and of the 924 patent. The claims of the 354 patent and the 924 patent each claim the same priority date as the claims of the 110 patent. 16 Claims 1 and 3 of the 354 patent were method claims: 1. A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of: detecting presence of a vehicle in said parking space using a battery-powered apparatus encased in a self-contained, sealed housing; processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space; determining from said stored data, by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and wirelessly transmitting, from said battery-powered apparatus encased in a self-contained, sealed housing, data relating to an identified instance of overstay of said vehicle in said parking space. … 3. A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of: detecting presence of a vehicle in said parking space using a battery-powered apparatus; processing and storing, in said battery-powered apparatus, data relating to presence of said vehicle in said parking space; determining from said stored data, by said battery-powered apparatus and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and wirelessly transmitting, from said battery-powered apparatus, data relating to an identified instance of overstay of said vehicle in said parking space. 17 Claim 1 of the 110 patent and claim 10 of the 924 patent claim inventions in closely similar terms. 18 Claims 2 and 4 of the 354 patent were apparatus (product) claims: 2. An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising: a detector adapted to detect presence of a vehicle in the parking space; a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a defined time duration in said parking space; a radio receiver coupled to said processor for receiving wake-up signals; a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and a battery for providing power to said detector, processor, radio receiver, and radio transmitter; wherein said apparatus is encased in a self-contained, sealed housing. … 4 An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising: a detector adapted to detect presence of a vehicle in the parking space; a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system whether said vehicle has overstayed a defined time duration in said parking space; a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and a battery for providing power to said detector, processor, and radio transmitter. 19 Claim 11 of the 110 patent and claim 10 of the 924 patent claim inventions in closely similar terms. 20 Claim 5 of the 354 patent was also directed to an apparatus: 5. The apparatus of claim 2 or claim 4, wherein said detector comprises a magnetic field sensor and said apparatus is adapted for subterraneous operation below the pavement surface of said parking space. 21 Claim 17 of the 110 patent (as dependent on claim 11) and claim 29 of the 924 patent claim inventions in closely similar terms. 22 Comparisons of these claims were made in tables annexed to SARB's written submissions. Subject to some differences in formatting, and in the headings used, these tables are substantially reproduced in Schedules 1 and 2 to these reasons. The similarities in claim language are manifest. 23 As I have noted, when the first proceeding was commenced on 5 April 2011, the 110 patent was in force. VMS applied for the 924 patent relatively soon thereafter, on 21 July 2011. However, the 924 patent was not granted until 4 February 2016.

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The Deed of Release 24 As I have noted, after the hearing of the appeal in the first proceeding, but before judgment was given, the parties entered into a Deed of Release (the Deed), dated 18 June 2014. By the Deed, VMS and SARB agreed to consent orders being made in the first proceeding and in the appeal. They also agreed to a release in the following terms: 6.1 On and from the date of receipt of payment of the Settlement Amount under clause 3, VMS releases and discharges SARB from all Claims for any infringements or exploitations of the VMS Innovation Patent that happened prior to its expiry. 6.2 VMS will not threaten or commence any action, proceeding or suit against any third party to whom SARB has supplied the SARB Product, for any Claims for infringements or exploitations of the VMS Innovation Patent that happened prior to its expiry, in respect of the SARB Product. 6.3 The parties acknowledge and agree that VMS does not by this Deed release, discharge or covenant not to sue SARB or any third party from any Claims for infringement and/or exploitation of any other patents or patent applications, including any patents or patent applications that may be related to the VMS Innovation Patent. 25 The reference in that clause to "the VMS Innovation Patent" was to the 354 patent. 26 The "SARB Product" was defined as: … the PinForce Sentinel vehicle detection unit that was the subject of the Claims made by VMS in the Proceeding. 27 The word "Claim" was defined as: … any present or future, actual or contingent, claim, cause of action, complaint, liability, cost or expense that any person (whether or not a Party to the Proceeding) has or might have in respect of the alleged infringements and exploitations of the VMS Innovation Patent that are the subject of the Proceedings, whether or not the facts, matters or circumstances giving rise to that Claim are known to that person or to any other person at the date of this Deed; 28 SARB agreed to pay VMS a sum of money (referred to in the deed as "the Settlement Amount") within 21 days. That sum has been paid. 29 The Deed also included the following covenant: 9.1 Subject to SARB's compliance with this Deed, SARB may plead this Deed as a complete defence to any action, proceeding or suit for Claims for infringement of the VMS Innovation Patent, which may be taken or commenced by another Party arising out of the facts or matters referred to in the Proceedings.

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The fate of the first proceeding 30 In accordance with the agreement referred to in the Deed as to the disposition of the appeal, consent orders were made on 16 July 2014 dismissing the appeal. As to the first proceeding itself, the following orders were made on 22 July 2014, also in accordance with the agreement referred to in the Deed: 1. Leave be granted to the applicant to discontinue the proceeding. 2. Leave be granted to the respondent to discontinue its cross-claim filed in the proceeding. 3. All previous costs orders, including with respect to reserved costs, be vacated. 4. There be no order as to the costs of the proceeding. 5. Order 7 made on 21 May 2013 be vacated. 6. The respondent be released from its undertaking given on 21 May 2013 with respect to keeping and maintaining records. 7. All amounts paid by the applicant pursuant to Order 1 made on 4 August 2011, together with all interests thereon, be released forthwith to the applicant to an account to be nominated by the lawyers for the applicant. 31 Although these orders vacated certain previous orders of the Court, they did not affect, nor did the discontinuance of the first proceeding from 22 July 2014 affect, the judicial determinations underpinning the declaratory relief granted on 21 May 2013: 1. The Respondent/Cross-Claimant has infringed each of claims 2, 4 and 5 of Australian Innovation Patent No. 2010101354 (the Patent) by making, selling and otherwise disposing of, and offering to sell and otherwise dispose of, and using and keeping (for the foregoing purposes) a vehicle detection product known as PinForce Sentinel VDU (PinForce Sentinel VDU Product) prior to the expiry of the Patent on 9 May 2013. 2. The Respondent/Cross-Claimant has infringed each of claims 1 and 3 of the Patent by using the PinForce Sentinel Product in a method for identifying overstay of a vehicle in a parking space known as the PinForce Sentinel VDU Method (PinForce Sentinel Method) prior to the expiry of the Patent on 9 May 2013. 3. The Respondent/Cross Claimant has infringed the claims of the Patent by authorising other persons to use the PinForce Sentinel VDU Product and PinForce Sentinel Method prior to the expiry of the Patent on 9 May 2013. 4. The Respondent/Cross-Claimant has infringed the claims of the Patent by supplying or offering to supply to persons the PinForce Sentinel VDU Product for use in the PinForce Sentinel Method prior to the expiry of the Patent on 9 May 2013 in circumstances where the Respondent/Cross Claimant: (a) had reason to believe that the PinForce Sentinel VDU Product would be used by such persons in accordance with the PinForce Sentinel Method; and (b) gave such persons instructions for the use of the PinForce Sentinel VDU Product and inducements to use the PinForce Sentinl Product, or published or authorised the publication of advertisements containing the said instructions or inducements.

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Pre-commencement correspondence 32 The correspondence between the solicitors for the parties, prior to the commencement of the present proceeding on 14 February 2019, is relevant to a number of issues arising in the present application because of an assertion by SARB, in that correspondence, that VMS's claim was flawed: the PinForce Sensor and the PinForce System (in the correspondence, initially referred to collectively as the PinForce Product and, subsequently, as the Sentinel Product), "currently" supplied and used (i.e., as at 28 November 2018) did not use the methods, apparatus or systems claimed in the 110 patent and the 924 patent. 33 VMS sought clarification of this assertion, particularly as to the differences between the products in issue in the first proceeding and the products "currently" supplied by SARB, and as to the respects in which the products "currently" supplied did not use the methods, apparatus or systems claimed in the 110 patent and the 924 patent. VMS also sought clarification as to when the "current" products commenced to be supplied and used. 34 In response, SARB identified two differences. First, with respect to the claims of the 110 patent, SARB said that the "subterranean detection device" of the Sentinel Product does not perform the step of determining whether the vehicle has overstayed; secondly, with respect to the claims of the 924 patent, SARB said that the "battery-powered apparatus" of the Sentinel Product does not determine, independently of any parking system, whether a vehicle has overstayed. SARB did not respond to the request for clarification as to when the "current" Sentinel Product commenced to be supplied and used. 35 Not satisfied with this response, VMS asked SARB to provide greater particularity with respect to the three issues it had raised. After some delay, SARB responded by repeating the two differences to which I have referred. It also expressed its confidence that its earlier Sentinel Product did not infringe any valid claim of the 110 and 924 patents. SARB said that, subject to "an appropriate confidentiality being implemented", it would be prepared to agree to a suitably independent expert being given access to and preparing a report on the current product. 36 VMS was not mollified by this response. It said that, absent the provision of certain documents it had requested from SARB, it "could place very little faith in the integrity" of the process that had been suggested with respect to the provision of an independent expert report, simply because it would not know whether the expert had been appropriately briefed. SARB responded, saying that the scope of, and information provided in, the brief to the expert "would of course be jointly agreed". 37 VMS then commenced the present proceeding, expressing reasons for doing so in a letter accompanying the service of the originating application and statement of claim. 38 It is apparent from the particulars given in the statement of claim that VMS's claims extend to PinForce Sensors and PinForce Systems supplied by SARB since at least October 2007. Thus, as pleaded, VMS's claims would cover products supplied by SARB that were the subject of the findings and judgment given in the first proceeding. Whether, and if so what, changes have been made to those products, and when those changes were made, remain issues to be decided. I observe, however, that SARB has been conspicuously silent as to when it commenced to supply its "current" products, despite VMS's request for elucidation of that fact. For its part, VMS does not accept, or at least is unpersuaded, that SARB's "current" products are different, or at least materially different, to the products the subject of the first proceeding.

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Introduction 39 This form of estoppel (Anshun estoppel) operates to preclude the assertion of a claim, or the raising of an issue of fact or law, in a subsequent proceeding if the claim or issue was so connected with the subject of a first proceeding that it would have been unreasonable, in the context of the first proceeding, for the claim not to have been made or the issue not to have been raised in that proceeding: Anshun at 598, 602 - 603; Tomlinson v Ramsey Food Processing Pty Limited [2015] HCA 28; 256 CLR 507 (Tomlinson) at [22]. 40 It is important to note the double negative used in this formulation of the estoppel. The question is not whether it would have been reasonable to have made the claim or to have raised the issue in the earlier proceeding. The question is whether the failure to do so was unreasonable in a particular context - the circumstances of the earlier proceeding. 41 Further, when considering whether the failure to do so was unreasonable in that context, the focus is not so much on "legalities" as it is on "practicalities": Gibbs v Kinna [1998] VSCA 52; [1999] 2 VR 19 (Gibbs) at [1]. As Ormiston JA said in that case (at [1]): … Frequently there is no clear answer as to what was possible and reasonable in the earlier proceedings; sometimes it will have been technically possible for the party to have relied on a particular defence or set up a particular claim, but nevertheless it may not have been demonstrated that it was unreasonable in all the circumstances not to have relied on that defence or not to have set up the claim. 42 In substantially the same vein, Allsop P in Champerslife Pty Ltd v Manojlovski [2010] NSWCA 33; 75 NSWLR 245 (Champerslife) observed (at [4]): One fundamental error in the approach of the respondent was to build on the proposition that because the matter could have been raised in the first proceeding to draw a conclusion, it should have been. That mechanistic approach was what Lord Bingham was rejecting in … Johnson v Gore Wood & Co. It is also what Gibbs CJ, Mason J and Aickin J found objectionable in Yat Tung Investment Co Ltd v Dao Heng Bank Ltd [1975] AC 581. In that case, Lord Kilbrandon spoke (at 590) of the principle as "an abuse of process to raise in subsequent proceedings matters which could and therefore should have been litigated in earlier proceedings" (Emphasis added). This way of putting it overstated the principle. The mere fact that the matter could have been raised does not mean it should have been raised (for the operation of the principle). Rather, it has to be so relevant as to make it unreasonable not to raise it. 43 As to the question of unreasonableness, the plurality in Anshun said (at 602 - 603): … we need to recall that there are a variety of circumstances … why a party may justifiably refrain from litigating an issue in one proceeding yet wish to litigate the issue in other proceedings e.g. expense, importance of the particular issue, motives extraneous to the actual litigation, to mention but a few. … It has generally been accepted that a party will be estopped from bringing an action which, if it succeeds, will result in a judgment which conflicts with an earlier judgment. 44 In explaining the notion of "conflicting judgments", the plurality said (at 603 - 604): By "conflicting" judgments we include judgments which are contradictory, though they may not be pronounced on the same cause of action. It is enough that they appear to declare rights which are inconsistent in respect of the same transaction. 45 In Gibbs, Kenny JA observed (at [28]): Whilst the likelihood of inconsistent judgments would, generally speaking, satisfy the criterion of unreasonableness, I assume for the purposes of this case that the criterion may be satisfied even when no such likelihood arises. If this be correct, then, in cases where there is no risk of inconsistent judgments, to decide whether or not it was unreasonable for a plaintiff not to litigate closely related issues in the one proceeding requires consideration of all the relevant facts, including the character of the previous proceeding, the scope of any pleadings, the length and complexity of any trial, any real or reasonably perceived difficulties in raising the relevant claim earlier, and any other explanation for the failure to raise the claim previously. 46 Importantly to the present case, an estoppel of this kind may be raised in a subsequent proceeding even when the earlier proceeding (in which it is said that the claim should have been made or the issue should have been raised) was settled without adjudication. In Johnson v Gore Wood & Co [2002] 2 AC 1 at 32 - 33 (Johnson), Lord Bingham of Cornhill said: … An important purpose of the rule is to protect a defendant against the harassment necessarily involved in repeated actions concerning the same subject matter. A second action is not the less harassing because the defendant has been driven or thought it prudent to settle the first; often, indeed, that outcome would make a second action the more harassing. 47 Given its foundation in unreasonableness with reference to the conduct of earlier proceedings, the question whether such an estoppel is to operate in subsequent proceedings depends upon the exercise of a broad discretion. As Samuels JA remarked in Boles v Esanda Finance Corporation Ltd (1989) 18 NSWLR 666 (Boles) at 673: … the question of whether a litigant's conduct was unreasonable can scarcely be determined in any other way.

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The parties' submissions 48 In its written submissions, SARB submitted that VMS's claims in relation to the 110 patent were so connected with the subject matter of the first proceeding as to have made it unreasonable, in the context of that proceeding, for VMS not to have made those claims in that proceeding, so that "all relevant issues could be determined at once". This is really no more than a statement of Anshun estoppel itself. By way of elaboration, SARB submitted that VMS has not identified any circumstances that would point to the conclusion that it was reasonable not to litigate the 110 patent in the first proceeding. This elaboration, however, does not focus on the correct question which, as I have emphasised, is not directed to whether the relevant party's conduct is reasonable, but whether its conduct is unreasonable having regard to the particular circumstances of the earlier proceedings. 49 VMS submitted that there is no scope for Anshun estoppel to operate in the present case, for a number of reasons. Conveniently, these reasons can be grouped as follows. 50 First, the judgment finding SARB's liability for infringement of the 354 patent was interlocutory in nature, given that a previous order of the Court provided for a split hearing, with the issues of liability for infringement and the validity of the 354 patent being determined separately from, and in advance of, all other issues. VMS submitted further that, as a result of the settlement that had been reached, the first proceeding had merely been discontinued and not dismissed; there was no extinguishment or final determination of the claims for relief that had been made: FCR r 26.14; SZFOG v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1374 at [16] - [17]. 51 Secondly, in so far as there had been a determination of the first proceeding, this was brought about by the parties entering into the Deed, the terms of which expressly preserved VMS's right to sue SARB for infringement of any patent, including, expressly, any patent related to the 354 patent: cl 6.3. According to VMS, any estoppel that was capable of arising was displaced by the terms of the Deed itself. 52 VMS submitted, alternatively, that the manner in which the first proceeding was brought to a conclusion is a "special circumstance" taking the present case outside the principles of Anshun estoppel. In putting the argument this way, VMS was invoking the following statement of principle by Wigram V.C. in Henderson v Henderson (1843) 3 Hare 100; 67 ER 313 at 319 - 320, on which Anshun estoppel is based: … where a given matter become the subject of litigation in, and of adjudication by, a Court of competent jurisdiction, the Court requires the parties to that litigation to bring forward their whole case, and will not (except under special circumstances) permit the same parties to open the same subject of litigation in respect of matter which might have been brought forward as part of the subject contest, but which was not brought forward, only because they have, from negligence, inadvertence or even accident, omitted part of their case … 53 VMS submitted that the "special circumstance" was SARB's acknowledgement, given in the context of settling the appeal and the first proceeding, that VMS would not be precluded from bringing patent infringement proceedings against SARB based on patents that included, by definition, the 110 patent (and, by extension of the argument, the 924 patent). 54 Relatedly, VMS submitted that the policy underpinning Anshun estoppel is to enable the parties to litigation to organise their affairs at the conclusion of the litigation based on the outcome of the litigation. Given the express preservation of VMS's right to bring further proceedings, as contemplated by cl 6.3 of the Deed, VMS submitted that this policy would not be served by precluding it from bringing the present proceeding. 55 Thirdly, VMS submitted that it is not bringing any claim for relief, or seeking any finding, that is inconsistent with the claims for relief or findings that it sought in the first proceeding. Further, the pleading of infringement of the 110 patent is directed primarily to infringements occurring after the expiration of the 354 patent on 9 May 2013. These infringements did not exist at the time that the findings of infringement were made in the first proceeding. Additionally, the limitation period under s 120(4) of the Act would prelude VMS from obtaining relief for infringement of the 110 patent occurring prior to 15 February 2013. 56 Fourthly, VMS submitted that although it does not accept SARB's assertion that there are two versions of the PinForce Product (or Sentinel Product) that operate materially differently, there is no suggestion that the asserted "current" version was in existence at the time of the first proceeding and could have been the subject of a claim in the first proceeding. 57 Fifthly, VMS pointed to the fact that the 110 patent is a standard patent, whereas the 354 patent was an innovation patent. Different criteria for patentability exist for standard patents and innovation patents. VMS submitted that it was not unreasonable for it to refrain from suing on the standard patent (the 110 patent), and to sue on the innovation patent (the 354 patent), in circumstances where doing so was quicker and cheaper, in that it saved the parties and the Court from the more time-consuming and costly exercise of defending a standard patent, particularly on the ground of lack of inventive step - a ground which VMS submitted that SARB doubtless would have asserted. VMS further submitted that it was not unreasonable to expect that a party in SARB's position might cease exploiting the impugned products once infringement, in terms of the 354 patent, had been determined, knowing that further related patents existed or "were in the process of grant".

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Consideration 58 There can be no doubt that the judgment finding SARB's liability for infringement of the 354 patent was interlocutory in nature, in the sense that not all the issues raised in the first proceeding were finally determined by that judgment. But this is entirely without significance to the present question. VMS's claim that SARB had infringed the 354 patent was fully litigated and, as events transpired, finally determined. In this regard, the appeal which SARB brought from the judgment that was given was dismissed (albeit by consent) on 16 July 2014 and, on 22 July 2014, the first proceeding was discontinued (once again, by consent). As I have noted, although the orders made on 22 July 2014 vacated certain previous orders of the Court, they did not affect, nor did discontinuance of the first proceeding from that date affect, the judicial determinations underpinning the declaratory relief that was granted on 21 May 2013. In short, the declarations remain in force. 59 Notwithstanding this state of affairs, I am not persuaded that VMS should be estopped from litigating its claims of infringement of the 110 patent in the present proceeding. This is so for a number of reasons. 60 First, despite the similarity in language and general subject matter of the claims litigated in the first proceeding and the claims sought to be litigated in the present proceeding, there can be no question of conflicting judgments being given. This is because the rights asserted by VMS in the first proceeding derive from the 354 patent, whereas the rights asserted in the present proceeding (relevant to the question of Anshun estoppel) derive from the 110 patent. As legal conceptions, each bundle of rights is discrete from the other, even though the patents in question are related in the way I have described. Whatever judgment might or might not be made in relation to infringement of the 110 patent, it could not contradict or impeach the judgment on liability given in respect of the 354 patent. 61 Further, as I will come to explain, there is additional support for excluding the possibility of conflicting judgments because of differing subject matter: see [66] - [67] below. Therefore, for the estoppel to arise in the present case, there must be some other fact or circumstance that is sufficient to satisfy the criterion of unreasonableness. 62 Secondly, and in any event, VMS could not have sued on the 924 patent in the first proceeding because that patent was not granted until 4 February 2016, some years after the granting of declaratory relief in that proceeding. Therefore, Anshun estoppel cannot be raised against the bringing of a claim of infringement of the 924 patent in the present proceeding. In the course of oral submissions, SARB accepted this to be the case. 63 If VMS cannot be precluded from suing on the 924 patent in the present proceeding on the basis of Anshun estoppel, there does not appear to be any sound discretionary reason for precluding VMS from also suing on the 110 patent if, as SARB contends, the asserted claims of the 924 patent and the 110 patent are materially the same. 64 Thirdly, although the 110 patent was in force when the first proceeding was commenced on 5 April 2011 and could have been sued on, the plurality in Anshun made clear that there may be a variety of circumstances why a party may justifiably refrain from litigating an issue in one proceeding yet seek to litigate that issue in a subsequent proceeding. Their Honours gave, as examples, the expense of litigation, the importance of the particular issue and motives extraneous to the actual litigation: see at [43] above; see also the observations in Gibbs quoted at [45] above. 65 Such circumstances exist in the present case. Bearing in mind the extensive defences mounted by SARB in the first proceeding (which involved a substantial attack on the validity of the claims of the 354 patent on a number of grounds), I have no reason to think that a similar attack would not have been made on the claims of the 110 patent, had it been put in suit. This attack, however, would have been based on the requirements of patentability set out in s 18(1) of the Patents Act 1990 (Cth) (the Act), which include the requirement for the presence of an inventive step. I accept that litigating both the 354 patent and the 110 patent in the one proceeding would have protracted the hearing and, in all likelihood, added significantly to the costs of the proceeding generally, in circumstances where it could reasonably have been expected that success in suing on the 354 patent alone might result in achieving cessation of the impugned conduct. 66 I am fortified in this view given SARB's assertion in correspondence (see [32] above) that the PinForce Product it currently supplies (in respect of which VMS now sues) is a different product to its former product, which does not possess certain operational features in relation to the detection of vehicle overstay - being features of the invention claimed in 110 patent and, by extension of SARB's argument, also claimed in the now expired 354 patent. There is, therefore, objective support for the argument that successfully suing on the 354 patent could reasonably have been expected to have brought about the prospect that SARB would cease its impugned conduct without the necessity for VMS to sue also on the 110 patent. Whether SARB has made product changes, and, if so, when, and whether such changes are relevant and material to whether the 110 patent (and, I would add, the 924 patent) have been infringed are, of course, questions that remain to be determined. 67 Fourthly, if SARB is correct in its assertion that its current products are different, then its exploitation of these products could not have been the subject of the first proceeding; those products simply did not exist at the relevant time. Further, if SARB is also correct that the claims of the 110 patent are materially the same as the claims of the now expired 354 patent and that the current products or their use do not infringe the 110 patent or, for that matter the 924 patent, then those products or their use could not have infringed the 354 patent, even if the products had been in existence at the relevant time. In short, the subject matter of the first proceeding, and the subject matter of the present proceeding, are different, at least in respect of those products. This also stands as another consideration militating against the possibility of conflicting judgments being given should the present proceeding continue with respect to the "current" products: see [60] above. 68 Fifthly, it is possible that, despite the judgment given in respect of infringement of the 354 patent, SARB continues to supply infringing products that also infringe, or whose use infringes, the 110 patent and, now, the 924 patent. However, there can be little merit in SARB complaining about being vexed by VMS suing it on the 110 patent and the 924 patent in the present proceeding. This is because the price of discontinuance of the first proceeding in relation to the 354 patent included an express acknowledgment by SARB that, by entering into the Deed, VMS did not release, discharge or covenant not to sue SARB in respect of other Claims (as defined) of patent infringement, including claims advanced through patents and patent applications related to the 354 patent: see cl 6.3. It is impossible to think that, by agreeing to this provision in the Deed, SARB was not cognisant of VMS's apparent rights under the 110 patent and its potential rights should the then pending application for the 924 patent mature into a granted patent, and of the risk of being sued on these patents in respect of the very acts that were found to have infringed the 354 patent. Therefore, SARB could not have proceeded on the assumption that its dispute with VMS was necessarily at an end. Plainly, it remained at risk: cf UBS AG v Tyne [2018] HCA 45; 360 ALR 184 (UBS) at [76]. 69 In responding to VMS's written submissions, SARB argued that the Deed did not preclude it from raising Anshun estoppel (or a claim of abuse of process) should VMS raise "a further claim for infringement". This may be so as a matter of text. But, it would be unrealistic to construe the Deed as containing what would be, on SARB's argument, a barren acknowledgement of important rights for which VMS had bargained. Therefore, even though the Deed did not, in terms, contain an express covenant precluding SARB from raising the question of Anshun estoppel, SARB's acknowledgement in cl 6.3 of the Deed should be understood and construed as an acceptance and agreement on its part that VMS was at liberty to sue it for infringement of any other patent in respect of the same acts for which VMS had sued it under the 354 patent in the first proceeding. To construe cl 6.3 otherwise would be to deprive VMS of part of the bargain it had struck with SARB when agreeing to discontinue the first proceeding against it. Thus, from the date of the Deed, SARB should be taken as having waived any entitlement it might have had to rely on Anshun estoppel should VMS bring any such claim, as it has now done. 70 In responding to VMS's written submissions, SARB also argued that the application of Anshun estoppel can be seen to serve public policy objectives as well as private interests, in particular the efficient use of scarce and finite judicial resources: Ford Motor Company of Australia Limited v Tristar Steering & Suspension Australia Limited [2003] FCA 596 at [35] - [38]. In short, Anshun estoppel is a principle that may apply independently of the acts of the parties or any agreement they might reach as to how litigation is to be conducted. 71 This is undoubtedly so. But, largely for the reasons I have discussed above, there is a sound basis for thinking that, in the present case, public policy considerations of this kind are not in jeopardy. To start with, the public interest in the efficient use of judicial resources is also served by confining litigation to a scope that is sufficient to achieve outcomes that, as a matter of practicality, are likely to be effective to quell the underlying dispute between the parties. I accept that, with hindsight, it may have been convenient had VMS also sued SARB for infringement of the 110 patent in the first proceeding. But at what additional cost and expense, and use of public and judicial resources, given at least the possibility of an acceptable outcome being achieved by VMS suing on the 354 patent alone? On the material before me, there is nothing that would lead me to conclude that, at the time of the first proceeding, there was, for example, a significant likelihood that VMS would also need to sue SARB for infringement of the 110 patent regardless of the outcome of suing it for infringement of the 354 patent. As I have explained, on the basis that VMS possessed, on SARB's argument, corresponding patent rights under the 110 patent which it should have deployed - and, I would add, which it could deploy in the future, if need be - it would be rational to think that a finding of infringement of the 354 patent would be a constraining influence on future conduct in respect of the PinForce Product. 72 The public interest is also served by encouraging parties to settle litigation, even if settlement is arrived at on a somewhat contingent, conditional or even partial basis. Undoubtedly, cl 6.3 foreshadowed the possibility of further proceedings between VMS and SARB for patent infringement. But, on the material before me, there is nothing that would lead me to conclude that, at the time of entering into the Deed, the prospect of that happening was more than a possibility. On the other hand, the parties were able to achieve a settlement which saw the appeal dismissed and the first proceeding discontinued, without the need for the parties to embark on the costly task of conducting a case for pecuniary relief, and for the Court's resources to be deployed to that end. 73 There may be, therefore, competing views as to how the public interest in the efficient use of judicial resources is best served in a given case. Balancing these sometimes conflicting views and the considerations that inform them is part and parcel of the discretionary calculus that is to be employed in determining whether conduct in not raising an available claim in an earlier proceeding was unreasonable in the particular circumstances. Looking at the matter with the benefit of hindsight, the question whether public policy considerations would have been better served by VMS also suing on the 110 patent in the first proceeding, rather than just on the 354 patent alone, is finely balanced. But a determination of unreasonableness should not be made on that basis, given that unreasonableness is to be determined against the background of the first proceeding. This requires a forward-looking evaluation taken at the time of the first proceeding. As I have explained, at the time of the first proceeding, there was a rational basis for suing on the 354 patent alone and a rational basis for settling the claim in the way provided by the Deed. In each case, the consequence was a saving, at that time, of the cost to the parties of further litigation and of the cost to the public of the future use of judicial resources, with the real prospect that those resources might not be called upon in the future in relation to the same dispute. 74 Therefore, to the extent that the present proceeding does involve the bringing of a claim of infringement of the 110 patent that could have been brought in the first proceeding, I am not persuaded that VMS acted unreasonably and should be estopped from bringing that claim in the present proceeding. In reaching this conclusion, I give particular weight to the terms on which the parties chose to resolve the first proceeding. In the particular circumstances of this case, the public policy considerations that SARB has called in aid are not countervailing. Further, as I have said on a number of occasions, VMS could not have sued on the 924 patent in the first proceeding in any event. 75 There is a further matter which is relevant to the exercise of the broad discretion the Court is called upon to exercise in the present case. Knowing of the existence of the 110 patent and its significance to the first proceeding, it was always open to SARB to cross-claim for a non-infringement declaration of that patent and/or to move for its revocation. It did not do so, perhaps for reasons consonant with the overarching objective referred to in s 37M of the Federal Court of Australia Act 1976 (Cth). If so, that too would have been a rational way in which to conduct the first proceeding, which did not call unnecessarily on the resources of the parties or the Court.

[22]

Introduction 76 The assertion of a right or obligation, or the raising of an issue of fact or law, in a subsequent proceeding can be, simultaneously, the subject of an Anshun estoppel and an abuse of a court's process in the subsequent proceeding: Tomlinson at [24]. In Tomlinson, the plurality at [25] - [26] said: 25 Abuse of process, which may be invoked in areas in which estoppels also apply, is inherently broader and more flexible than estoppel. Although insusceptible of a formulation which comprises closed categories, abuse of process is capable of application in any circumstances in which the use of a court's procedures would be unjustifiably oppressive to a party or would bring the administration of justice into disrepute. It can for that reason be available to relieve against injustice to a party or impairment to the system of administration of justice which might otherwise be occasioned in circumstances where a party to a subsequent proceeding is not bound by an estoppel. 26 Accordingly, it has been recognised that making a claim or raising an issue which was made or raised and determined in an earlier proceeding, or which ought reasonably to have been made or raised for determination in that earlier proceeding, can constitute an abuse of process even where the earlier proceeding might not have given rise to an estoppel. Similarly, it has been recognised that making such a claim or raising such an issue can constitute an abuse of process where the party seeking to make the claim or to raise the issue in the later proceeding was neither a party to that earlier proceeding, nor the privy of a party to that earlier proceeding, and therefore could not be precluded by an estoppel. 77 In UBS, the majority in the High Court observed (at [1]) that, although the circumstances that might give rise to an abuse of process are varied and not susceptible to exhaustive statement, either of two conditions will enliven the power. The first is where the use of the court's procedures occasions unjustifiable oppression to a party. The second is where the use serves to bring the administration of justice into disrepute. 78 As to the second matter, their Honours said (at [38]): 38 The timely, cost effective and efficient conduct of modern civil litigation takes into account wider public interests than those of the parties to the dispute. These wider interests are reflected in s 37M(2) of the FCA. As the joint reasons in Aon Risk Services Australia Ltd v Australian National University explain, the "just resolution" of a dispute is to be understood in light of the purposes and objectives of provisions such as s 37M of the FCA. Integral to a "just resolution" is the minimisation of delay and expense. These considerations inform the rejection in Aon of the claimed "right" of a party to amend its pleading at a late stage in the litigation in order to raise an arguable claim. The point is made that a party has a right to bring proceedings but that choices are made respecting what claims are made and how they are framed. Their Honours speak of the just resolution of the dispute in terms of the parties having a sufficient opportunity to identify the issues that they seek to agitate. The respondent's argument in Aon, that the proposed amendment to raise the fresh claim was a necessary amendment to avoid multiple actions, did not avail. As their Honours observe, if reasonable diligence would have led to the bringing of the claim in the existing proceedings, any further proceeding might be met by a stay on Anshun grounds. 79 After referring to Securum Finance Ltd v Ashton [2001] 1 Ch 291 at [34], their Honours nevertheless cautioned (at [43]): 43 This is not to say that in England or here the circumstance that a claim could have been raised in earlier proceedings makes the raising of it in later proceedings an abuse of process. It is to recognise that in some circumstances the bringing of a claim which should have been litigated in an earlier proceeding will be an abuse and that that may be so notwithstanding that the later proceeding is not precluded by an estoppel. So much is made plain in Tomlinson … 80 In the same vein, in Johnson Lord Bingham said (at 31): 31. … The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. As one cannot comprehensively list all possible forms of abuse, so one cannot formulate any hard and fast rule to determine whether, on given facts, abuse is to be found or not. …

[23]

The parties' submissions 81 SARB submitted that the present proceeding should be stayed permanently as an abuse of process, substantially for the same reasons it advanced in seeking an Anshun estoppel. Those reasons involved the advancement of its private interests (there would be, inevitably, increased costs to SARB who would be vexed by having to deal again with claims that should have been resolved in the first proceedings) and the advancement of public policy considerations (the Court should not lend its procedures to the staged conduct of what is factually one dispute which would give rise to the perception that the administration of justice is inefficient, careless of costs and profligate in its application of public moneys). 82 As I have already explained, the advancement of SARB's private interests rings hollow when regard is had to the terms on which the first proceeding was settled between the parties: see [68] - [69] above. Also, in light of the assertion that its "current" products are different, it is not correct for SARB to say, in the unqualified way it has, that VMS's present claims should have been resolved in the first proceeding: see [66] - [67] above. 83 SARB's advancement of public policy considerations is legitimate but, in light of all the circumstances of the case, these considerations do not persuade me that the commencement of the present proceeding is an abuse of process, in light of the matters I have discussed at [70] - [73] above. 84 In oral submissions, SARB sought to extend its case on abuse of process to VMS's pleading of infringement of the 924 patent. The argument commenced with the proposition that it is an abuse of process for VMS to sue on the 110 patent in the present proceeding. If that was so, SARB argued that it would be, equally, an abuse of process for VMS to sue it on the 924 patent. To permit VMS to do so it would "subvert the protection" afforded to SARB in respect of claims made by VMS on the 110 patent. 85 I do not accept that argument. In circumstances where VMS's rights under the 924 patent did not even exist at the time of the first proceeding, I am not persuaded that it is an abuse of process for VMS to sue on that patent in the present proceeding - particularly, I would add, when SARB asserts that different products are also in issue. 86 On this aspect of its case, SARB advanced two, more specific, submissions. The first relates to alleged infringements before 15 February 2013. The second relates to VMS's claim to damages for alleged infringements before 9 May 2013. 87 As to alleged infringements before 15 February 2013, SARB submitted that VMS's claims were barred by operation of s 120(4) of the Act, which provides: Infringement proceedings must be started within: (a) 3 years from the day on which the relevant patent is granted; or (b) 6 years from the day on which the infringing act was done; whichever period ends later. 88 SARB submitted that the present pleading of VMS's claims fails to disclose a reasonable cause of action, or is embarrassing or an abuse of process, to the extent that it captures these alleged infringements. SARB submitted that the present proceeding should be permanently stayed to the extent that it raises such allegations or, alternatively, should be struck out pursuant to r 16.21(1) FCR, which provides: A party may apply to the Court for an order that all or part of a pleading be struck out on the ground that the pleading: (a) contains scandalous material; or (b) contains frivolous or vexatious material; or (c) is evasive or ambiguous; or (d) is likely to cause prejudice, embarrassment or delay in the proceeding; or (e) fails to disclose a reasonable cause of action or defence or other case appropriate to the nature of the pleading; or (f) is otherwise an abuse of the process of the Court. 89 As to alleged infringements before 9 May 2013, SARB points to cl 6.1 of the Deed by which VMS agreed that, on receipt of the Settlement Amount, it released and discharged SARB from "all Claims for any infringements or exploitations of the [354 patent] that happened prior to its expiry." SARB also pointed to the particulars given by VMS in relation to para 10 of the statement of claim. In those particulars, VMS refers to the correspondence I have summarised above and the fact that SARB has asserted two versions of the PinForce Product - one version being the products in suit in the first proceedings and the other version being SARB's "current" products. 90 In light of these particulars, SARB developed the following argument: VMS has alleged that the PinForce Product in suit in the first proceeding is the PinForce Product in suit in the present proceeding; it is, therefore, apparent that VMS has already been compensated for the PinForce Product supplied before 9 May 2013 (the date when the 354 patent expired); the Settlement Amount referred to in the Deed should be regarded as a recoupment of the whole of any loss or damage which occurred as a result of the PinForce Product being sold or supplied before 9 May 2013; the principle of double satisfaction precludes a party from recovering twice for the same loss and that a further claim for that loss will fail: Baxter v Obacelo Pty Ltd [2001] HCA 66; 205 CLR 635 at [37] - [40]. 91 SARB also advanced a variation of this argument: the "once and for all" rule operates to prevent the recovery of damages where there is a previous award of damages, compromise or settlement (Brunsden v Humphrey (1884) 14 QBD 141); whether or not causes of action are the same depends on matters of substance rather than technical identity; it is apparent from the correspondence between the parties that VMS contends that the evidence on which it relied in the first proceeding will establish infringement of the 110 patent and the 924 patent; given the similarity of the patents in question, the fact that the causes of action relate to the same conduct by SARB, and VMS's apparent approach in proving infringement, the causes of action in the first proceeding and the present proceeding are in substance the same, even if they are technically different; VMS has recovered its loss or damage in respect of the PinForce Product sold or supplied before 9 May 2013. 92 VMS relied, substantially, on the submissions it had advanced in respect of Anshun estoppel. 93 As to alleged infringements before 15 February 2013, VMS submitted that the appropriate course was for SARB to plead its limitation defence rather than to require the Court to permanently stay or strike out parts of the proceeding at the interlocutory stage. VMS also submitted that, regardless of any pleaded limitation issue, the supply of the PinForce Product before 15 February 2013 is relevant to its claim for additional damages and relevant to its claims of authorisation after 15 February 2013, both of which involve questions of fact and law that are best determined in the setting of a trial. 94 As to its claim to damages for alleged infringements before 9 May 2013, VMS accepted in its written submissions that, if it is successful in the present proceeding, it should not be permitted double recovery. It also accepted the correctness of the "once and for all" rule. Further, at the commencement of the hearing of the amended interlocutory application, VMS said that, in the present proceeding, it will not seek damages in respect of the period 15 February 2013 to 9 May 2013 for infringement of the 110 patent.

[24]

Consideration 95 In light of the submissions that have been advanced, the question whether the present proceeding is an abuse of the Court's process, and should be permanently stayed, falls to be determined by reference to the same considerations I have discussed in relation to the question of whether Anshun estoppel applies. For the reasons I have given in that regard, I am not persuaded that the present proceeding is an abuse of the Court's process. 96 As to whether VMS's presently pleaded claims of infringement are, in part, statute-barred and should be permanently stayed or struck out, I am of the view that the better course is for SARB to plead its limitation defence and, should the occasion arise, for that defence to be determined in the setting of a trial. I accept that allegations of past conduct could be relevant to the determination of other relief that might be granted, assuming success on VMS's part on the question of infringement: see, for example, the Full Court's recent observations on the breadth of the circumstances that might be relevant to the question of additional damages in Hytera Communications Corporation Limited v Motorola Solutions, Inc [2019] FCAFC 210 at [25]. I also accept that allegations of past conduct could be relevant to the question of alleged authorisation after 15 February 2013. Pleading a limitation defence will preserve SARB's position while, at the same time, avoiding the possibility that VMS is peremptorily shut out from advancing facts that might well be relevant to other aspects of its claims. 97 Equally, I accept that, at the present time, the Court is in no position to determine whether or, if so, how VMS's claims may be precluded by the principle against "double recovery" or how the "once and for all" rule might apply. I am in no doubt that these questions will be important, if they remain live questions (given VMS's statement that it will not seek damages in respect of the period 15 February to 9 May 2013). If they remain live questions, they too are best considered in the setting of a trial where all the relevant facts will be fully found. The Court should proceed cautiously at this stage of the proceeding. To attempt to deal with these difficult questions now is fraught with the twin dangers of error and potential injustice.

[26]

The parties' submissions 100 SARB pointed to the fact that para 10 of the statement of claim particularises two versions of the PinForce Product but does not provide instantiation of each type of infringement alleged. 101 SARB submitted further that the statement of claim provides no more than an overarching allegation of infringement of certain claims and that it is vague and too general. In this connection, SARB submitted that the statement of claim suggests that any system described as the PinForce System must infringe, despite SARB having advised VMS that this assumption is unsafe. SARB argued that it has offered VMS the opportunity to test its advice through the appointment of an independent expert to report on the functionality of its "current" products (being the "second version" of the products referred to in the statement of claim). SARB submitted that, given that this opportunity has not been taken up, VMS does not have any basis to assert that the second version of the products infringes the 110 patent or the 924 patent. SARB submitted that, absent proper particularisation, the allegations in the statement of claim relating to the second version of the products should be struck out under r 16.21 FCR. 102 VMS submitted that there is no justification for striking out the allegations in the statement of claim concerning the second version of the products. It submitted that its pleaded case is that both versions of the products operate in the same manner, including in relation to determining vehicle overstay and that, in its present form, the statement of claim is sufficient to enable SARB to understand the case it has to meet. 103 In amplification of its case, VMS submitted that an instructional video on SARB's website depicts the PinForce Sensor communicating a red "overstay" signal to a handheld device after the sensor has determined that a vehicle has overstayed. VMS submitted that it is entitled to rely on an inference that SARB's asserted "current" version of its products works in the same way as the infringing products that were the subject of the first proceeding.

[29]

GEneral conclusions 108 I am not persuaded that VMS is estopped from bringing its claims of infringement of the 110 patent or the 924 patent, or that the present proceeding should be permanently stayed as an abuse of the Court's process. 109 To the extent that the statement of claim pleads claims that SARB considers to be statute-barred, then SARB should plead a limitation defence directed to those claims. In the particular circumstances of the present case, the determination of that defence should be made in the context of a trial, not as part of an interlocutory application for a permanent stay or for strike out. 110 To the extent that issues of "double recovery" and the like arise, then in the particular circumstances of this case those issues should also be determined in the context of a trial and not as part of an interlocutory application for a permanent stay or for strike out. 111 There will need to be clarification of the products that SARB has supplied, understanding of course that SARB contends that its "current" products do not infringe the 110 patent or the 924 patent. Given that it is SARB who has raised this issue, it is not clear to me why it should not be required to provide appropriate particulars in this regard. It might be appropriate for it to provide a Position Statement on Infringement pursuant to para 6.13 of Practice Note (IP-1) and/or a product and method description pursuant to paras 6.14 - 6.16. At the present time, I am not persuaded that the preparation of a report by an independent expert on the functionality of the PinForce Product is warranted but I do not reject the possibility that this step might commend itself at a later stage of the proceeding. The provision of further particulars by VMS should be kept under review. 112 There is a further matter. SARB has sought an order under s 37AF of the Federal Court of Australia Act 1976 (Cth) that the Settlement Amount referred to in the Deed not be disclosed to any persons other than VMS, SARB and Melbourne's internal and external legal representatives. I decline to make such an order because, in fact, the quantum of the Settlement Amount has not been disclosed in the evidence or otherwise communicated to the Court.

[31]

Schedule 1 354 patent 110 patent Claim 1 Claim 3 Claim 1 1.1 A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of: A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of: A method performed by a subterraneous detection apparatus for identifying overstay of a vehicle in a parking space, said method comprising the steps of: 1.2 detecting presence of a vehicle in said parking space detecting presence of a vehicle in said parking space detecting presence of a vehicle in said parking space; 1.3 using a battery-powered apparatus using a battery-powered apparatus; 1.4 encased in a self-contained, sealed housing; 1.5 processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space; processing and storing, in said battery-powered apparatus, data relating to presence of said vehicle in said parking processing and storing data relating to presence of said vehicle in said parking space; space; 1.6 determining from said stored data, by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and determining from said stored data, by said battery-powered apparatus and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; determining whether said vehicle has overstayed a defined time duration in said parking space; and and 1.7 wirelessly transmitting, from said battery-powered apparatus encased in a self-contained, sealed housing, data relating to an identified instance of overstay of said vehicle in said parking space. wirelessly transmitting, from said battery- powered apparatus, data relating to an identified instance of overstay of said vehicle wirelessly transmitting data related to identified instances of overstay of said vehicle in said parking space. in said parking space. Claim 2 Claim 4 Claim 11 2.1 An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising: An apparatus for identifying overstay of a vehicle in a parking A battery-powered apparatus for subterraneous installation for identifying overstay of a vehicle in a parking

[32]

354 patent 110 patent space, said apparatus comprising: space, said apparatus comprising: 2.2 a detector adapted to detect presence of a vehicle in the parking space; a detector adapted to detect presence of a vehicle in the parking space; a detector adapted to detect presence of a vehicle in the parking space; 2.3 a processor coupled to said detector, a processor coupled to said detector, a processor coupled to said detector, 2.4 said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system said processor adapted to process and store data received from said detector and to determine 2.5 whether said vehicle has overstayed a defined time duration in said parking space; whether said vehicle has overstayed a defined time duration is [sic] in said parking space; whether said vehicle has overstayed a defined time duration in said parking space; 2.6 a radio receiver coupled to said processor for receiving wake-up signals; a radio receiver coupled to said processor for receiving wake-up signals; and 2.7 a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space. 2.8 a battery for providing power to said detector, processor, radio receiver, and radio transmitter; a battery for providing power to said detector, processor, and radio transmitter. See 2.1 above: battery- powered 2.9 wherein said apparatus is encased in a self-contained, sealed housing.

[34]

Schedule 2 354 patent 924 patent Claim 1 Claim 3 Claim 1 1.1 A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of: A method for identifying overstay of a vehicle in a parking space, said method comprising the steps of: A method for identifying vehicles that overstay a parking time limit associated with a parking space, said method comprising the steps of: 1.2 detecting presence of a vehicle in said parking space detecting presence of a vehicle in said parking space detecting presence of a vehicle in said parking space; 1.3 using a battery-powered apparatus using a battery-powered apparatus; using a battery-powered apparatus 1.4 encased in a self-contained, sealed housing; encased in a self- contained, sealed housing; 1.5 processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space; processing and storing, in said battery-powered apparatus, data relating to presence of said vehicle in said parking space; processing and storing, in said battery-powered apparatus encased in a self-contained, sealed housing, data relating to presence of said vehicle in said parking space; 1.6 determining from said stored data, by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and determining from said stored data, by said battery-powered apparatus and independently of any parking payment system, whether said vehicle has overstayed a defined time duration in said parking space; and determining from said stored data by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any parking payment system, whether said vehicle has overstayed said parking time limit associated with said parking space; 1.7 detecting presence of a data collection apparatus within wireless communication range of said detection apparatus; and 1.8 wirelessly transmitting, from said battery-powered apparatus encased wirelessly transmitting, from said battery- when presence of said data collection apparatus

[35]

354 patent 924 patent in a self-contained, sealed housing, data relating to an identified instance of overstay of said vehicle in said parking space. powered apparatus, data relating to an identified instance of overstay of said vehicle in said parking space. is detected, wirelessly transmitting from said battery-powered apparatus encased in a self-contained, sealed housing, data relating to an identified instance of said vehicle overstaying said parking time limit associated with said parking space. Claim 2 Claim 4 Claim 10 2.1 An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising: An apparatus for identifying overstay of a vehicle in a parking space, said apparatus comprising: A battery-powered apparatus for identifying vehicles that overstay a parking time limit associated with a parking space, said apparatus comprising: 2.2 a detector adapted to detect presence of a vehicle in the parking space; a detector adapted to detect presence of a vehicle in the parking space; a detector adapted to detect presence of a vehicle in the parking space; 2.3 a processor coupled to said detector, a processor coupled to said detector, a processor coupled to said detector, 2.4 said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system said processor adapted to process and store data received from said detector and to determine from said data and independently of any parking payment system 2.5 whether said vehicle has overstayed a defined time duration in said parking space; whether said vehicle has overstayed a defined time duration is [sic] in said parking space; whether said vehicle has overstayed a parking time limit associated with said parking space; 2.6 a radio receiver coupled to said processor for receiving wake-up signals; a radio receiver coupled to said processor for receiving radio signals

[36]

354 patent 924 patent from a data collection apparatus; and 2.7 a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said parking space; and a radio transmitter coupled to said processor for transmitting data relating to identified instances of said vehicles overstaying said parking time limit associated with said parking space; 2.8 a battery for providing power to said detector, processor, radio receiver, and radio transmitter; wherein said apparatus a battery for providing power to said detector, processor, and radio transmitter. wherein said battery- powered apparatus 2.9 is encased in a self-contained, sealed housing. is encased in a self- contained, sealed housing. Claim 5 Claim 29 3.1 The apparatus of claim 2 or claim 4, See above for Claim 10 The apparatus of claim 26 or claim 28, 3.2 wherein said detector comprises a magnetic field sensor and wherein said detector comprises a magnetic field sensor and 3.3 said apparatus is adapted for subterraneous operation below the pavement surface of said parking space. said apparatus is adapted for subterraneous operation below the pavement surface of said parking space.

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia

At a glance

Court

Decision date

Before

Source

Judgment (36 paragraphs)

Parties

Legislation Cited (3)

Cases Cited (12)

Cited By (6)