Lack of Inventive Step (Both Patents)
533 The relevant principles are not in dispute.
534 In order for a claimed invention to be a patentable invention it must involve an inventive step. There is a presumption of inventiveness unless the contrary is shown. Section 7(2) of the Act is in the following terms:
For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
535 In this case, the relevant information is common general knowledge and SARB does not rely on any prior art information of the type identified in s 7(3) of the Act. The priority date is 17 May 2004 (PD).
536 "Obvious" has been said to mean very plain and a "scintilla of invention" is sufficient to support the validity of a patent. An invention will involve an inventive step unless it is established that the person skilled in the art would have been led to the invention directly or as a matter of course. At the same time, the High Court has approved the observations of Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565; (1989) 13 IPR 513 that an invention involves "some difficulty overcome, some barrier crossed" (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173 (Lockwood (No 2) at [51]-[52]). The onus is on the party challenging validity to establish a lack of inventive step (Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21; (2002) 76 ALJR 816; (2002) 188 ALR 280 at [31]; AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356 at [18] per French CJ).
537 In the case of a combination patent, it is the inventiveness of the combination as a whole which must be examined and it is not permissible to determine inventiveness by a piecemeal examination integer by integer (Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253; Alphapharm at [41] per Gleeson CJ, Gaudron, Gummow and Hayne JJ; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 per Lockhart J).
538 The Court must be alert to avoid the use of hindsight in assessing inventive step, particularly in the case of a claim for a combination involving an interaction of integers, some or all of which are well known (Alphapharm at [21]).
539 Secondary evidence such as the commercial success of the invention, the fact that the invention satisfied a long-felt want or need, the fact that others have tried to find a solution, but have failed, and the copying of the invention by commercial competitors may all be relevant to the Court's determination of whether the claimed invention involves an inventive step. As the High Court said in Lockwood (No 2) (at [116]), the importance of secondary evidence and its weight will vary from case to case and it will not necessarily be determinative.
540 The skills of the person skilled in the art (skilled addressee) will depend on the relevant art, in other words, the field of the invention. It is well established that the skilled addressee for the purposes of determining the inventive step issue may be a team of persons (ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577 at [100] per Emmett J; Alphapharm at [30] per Gleeson CJ, Gaudron, Gummow and Hayne JJ; at [153] per Kirby J). There is a dispute in this case about the identity of the skilled addressee.
541 Common general knowledge is a narrower conception than public knowledge. The fact that information is publicly available and even widely circulated and widely read is not enough to make it common general knowledge. As Luxmoore J said in British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 (at 250):
Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.
542 In Graham Hart (1971) Pty Ltd v SW Hart & Co Pty Ltd [1978] HCA 61; (1978) 141 CLR 305, Aickin J (with whom Barwick CJ agreed) said (at 329) that common general knowledge was:
… part of the ordinary equipment of all persons engaged in the relevant art, i.e. part of their general background knowledge which they put to use in the exercise of that branch of industry or manufacture.
543 SARB adduced evidence from three witnesses in support of its lack of inventive step case. Mr Harcourt gave evidence on the topic and, as I have previously said, he has expertise in the field of electronics and communications engineering technologies. Mr Craig Hawkings has expertise in the field of parking enforcement obtained from working in the local government area for a number of years. Mr Thomas Stamp has expertise in the field of electronics and communications engineering technologies.
544 The fields of expertise of the witnesses may be divided into two broad categories. The first category consists of those witnesses who have expertise in the field of the existing methods of parking enforcement as at the PD and developments in the area of parking enforcement prior to that date. The second category consists of those witnesses who had various forms of expertise in the field of electronic engineering.
545 VMS adduced evidence from four witnesses in answer to SARB's lack of inventive step case. Mr Spirovski gave evidence on the issue and, as I have previously said, he has expertise in electrical engineering specialising in electronics design. Mr Jason Pieloor is a computer systems and software engineer. At the time he swore a statutory declaration in 2014, he had had approximately 18 years' experience in the field of product development and technology solutions for embedded platforms, primarily in the subscription and pay-per-view television industry. Mr Larry Schneider has expertise in parking management, operations, planning and technology. Mr Thomas Gladwin has expertise in parking enforcement obtained from working in the local government field for a number of years.
546 In its closing submissions, SARB referred to Mr Stamp as its lead witness in support of its lack of inventive step case. It submits that Mr Harcourt's evidence supports Mr Stamp's evidence. In closing submissions, counsel for SARB referred to Mr Harcourt's evidence "as supporting evidence rather than the primary evidence". I will approach SARB's inventive step case in that way and I will, in due course, explain why Mr Harcourt's evidence provides little or no support for SARB's case.
547 VMS submitted that there had been a shift in SARB's case with respect to the skills and expertise of the skilled addressee from a case of the skilled addressee having skills and expertise in parking enforcement as it was before and at the PD and parking enforcement technology to a case where the skilled addressee has expertise in parking enforcement technology. Whether that be so or not, it is clear that SARB advances a case of the skilled addressee having expertise in parking enforcement technology and does not include a skilled addressee with skills and expertise in parking enforcement before and at the PD other than, in the case of the latter, by way of providing background information about the nature of the problem to be solved. I will return to this issue later in these reasons.
548 The problems with existing methods of enforcing time limits in vehicle parking spaces were well known and part of the common general knowledge in the parking enforcement field before and at the PD. They are described in the background section of the specifications in each patent (see at [23] above). The witnesses with experience in parking enforcement before and at the PD gave evidence of the problems.
549 Mr Schneider is a self-employed consultant. Prior to 20 December 2019, he was employed by the Australian Road Research Board Group Limited (ARRB). He described ARRB as a leading provider of advisory and consultancy services to road agencies and public and private organisations, including local councils, state governments, airports, hospitals, shopping centres and universities. Mr Schneider made a statutory declaration on 11 September 2014 which was used by VMS in the opposition proceedings in the Australian Patents Office in 2014 brought by SARB. He was also engaged by VMS in 2018 to provide expert evidence in patent proceedings in this Court involving SARB and VMS (NSD 75 of 2018).
550 In his statutory declaration in 2014, Mr Schneider said that he was, at the time of the declaration, president of Parking Australia and a manager and principal consultant of ARRB. He had worked in the fields of private and public management and equipment in Australia, New Zealand and South Africa for about 28 years. He held Bachelor degrees in Commerce, Arts and Law. In January 2004, he began working as a senior business manager at ARRB and, in January 2008, he was promoted to the role of manager and principal consultant of Luxmoore, which was a wholly owned division of ARRB specialising in the provision of consultancy services to the parking industry. He described his role at ARRB since January 2004 as one of providing advisory and consultancy services in parking management, operations, planning and technology.
551 Mr Schneider commenced work for Wilson Parking in 1985 and he was a director from 1992. He said that after January 2004, when he started with the ARRB, he provided consultancy services to local councils. Mr Schneider said that chalking was the typical method of detecting overstay in unpaid parking spaces before May 2004. Chalking required officers to go twice to every parking space to detect an infringement and where chalking was used, drivers of the vehicles could avoid infringement by rubbing chalk marks off their tyres, or by rolling their car back or forwards to hide the chalk marks. These actions by vehicle owners meant that parking officers were not able to detect all infringements. Mr Schneider said that chalking was not a very efficient system and there was room for improvement in the enforcement of time limits for unpaid parking systems in May 2004. Mr Schneider considered that that view was widely appreciated by others in the parking industry.
552 Mr Tom Gladwin was, from early 2014 to 15 January 2021, the Local Laws Supervisor at Boroondara Council in the inner-eastern suburbs of Melbourne. Between May 1996 and October 2011, Mr Gladwin was the manager of Parking and Local Laws at the Maribyrnong City Council in the inner-western suburbs of Melbourne. The responsibilities of that position included the overall responsibility for managing council's parking operations and enforcement. Mr Gladwin swore an affidavit in the VMS 2013 proceedings on behalf of VMS and he made a statutory declaration on 9 September 2014 in the opposition proceedings in the Australian Patents Office. In his oral evidence, Mr Gladwin said that before his employment by the City of Maribyrnong and since 1974, he had worked for the City of Brunswick, the City of St Kilda and the Stonnington Council.
553 Mr Gladwin said that chalking was the primary means of enforcing time-limited unpaid parking before May 2004 and that he considered chalking as at May 2004, to be "cumbersome, inefficient, slow and expensive". He identified the disadvantages of chalking as follows: (1) the markings could be rubbed out; (2) the parking officer needed to visit parking spaces twice for each offence; and (3) there was a risk of accidents in the course of checking chalking marks and relatedly, there were occupational, health and safety risks and a risk of injuries to parking officers. Mr Gladwin agreed that by reason of these disadvantages, only a very small percentage of overstaying vehicles could be identified by using the chalking method. Mr Gladwin said that he was sufficiently frustrated with the difficulties that he spoke to parking technology service providers before May 2004. Mr Gladwin identified his view to those providers to the effect that "it must be possible to do something better than chalking". He spoke to Mr Welch. Mr Gladwin said that his view was widely shared amongst those persons he spoke to, that is to say, that there must be a better way to identify overstay and to enforce time-limited parking. A better way would enable councils to collect and store data that could be used for planning and management and would increase revenue.
554 Mr Hawkings was, at the time he gave evidence, a rugby operations manager. However, he had worked in local government for approximately 18 years between 1988 and 2006. He was employed by the Sutherland Shire Council between August 1999 and March 2002 as Manager - Community Law Enforcement Officer and by the Adelaide City Council between March 2002 and December 2006 as Manager - Parking and Information Officer. In his affidavit, he described his position at the Adelaide City Council as Team Leader, Regulatory Services. In this role, he was responsible for:
(a) managing over 60 officers who enforced local government legislation and regulations, primarily relating to parking enforcement. I did not personally carry out parking enforcement duties in the field in my role;
(b) directing public relations and crisis communications campaigns, including drafting press releases, primarily aimed at improving the perception of parking officers within the community, and so reducing instances of officers being abused and assaulted during the course of their duties;
(c) devising short- and long-term action plans to address a range of municipal needs (some examples of which are discussed in paragraph 19 below);
(d) preparing memos and reports to ACC on issues such as policing strategies, dealing with complaints, recommendations for enforcement and methods for increasing efficiencies, and statistical analyses on revenue versus expenditure; and
(e) negotiating contractual agreements for projects on behalf of ACC (including contracts for software, hardware and other equipment for parking enforcement) and preparing budget documents for these projects to present to Council for their approval. These projects included the introduction of PDAs for parking officers, discussed further in paragraphs 102 to 109 below.
555 Mr Hawkings gave similar evidence to the other parking experts about the use of chalking in the period prior to May 2004 as a means of parking enforcement for timed on-street parking. He also identified the disadvantages of chalking in similar terms to the other witnesses. Mr Hawkings said that he considered it "inevitable" that all stages of the parking enforcement cycle would eventually become fully automated. He did not know how long it would be before that was the case. As I understood his evidence, the concept of fully automated in his mind did not exclude humans altogether and, in fact, he said that, in his view, a human should be involved at all times in the issuing of an infringement notice.
556 I turn now to summarise the common general knowledge as at the PD. The evidence establishes that before and at the PD, enforcement of unpaid but time-limited parking was primarily carried out using manual methods such as chalking. The enforcement of parking restrictions by chalking was not a very efficient system because officers needed to go twice to every parking space to detect an infringement and where chalking was used, drivers of the vehicles could avoid infringement by rubbing chalk mark off their tyres or by rolling their car back or forwards to hide chalk marks. In addition, an infringement may be missed by a parking officer because he or she did not return to the vehicle before it was driven away. There was room for improvement in the enforcement of time limits for unpaid parking systems in May 2004 and that that was widely appreciated by others in the industry.
557 One person in the field (Mr Gladwin) was so frustrated by the difficulties caused by chalking that he discussed them with a parking technology service provider in the early 2000's and before May 2004. He had a discussion with Mr Welch before May 2004. The view that it should be possible to come up with something better than chalking was a widely held view. However, there is no evidence that any person in the parking enforcement field knew what the solution might be or that before and at the PD any local council had engaged an engineer to design or create a product to address or overcome the inefficiencies of the chalking method. I note that in this context, Mr Gladwin said that he had regular interactions with representatives from other local councils and that he expected he would have become aware of the fact if a local council had engaged an engineer to design such a product.
558 Other methods of enforcing time limits in parking spaces before and at the PD were parking meters and there were three types of parking meter systems in use in user pay parking areas, being single space coin and multi-space "pay and display" and "multi-bay" systems. "Pay and display" parking ticket machines were typically installed on the side of the street and members of the public were required, upon parking their vehicle, to walk up to the ticket machine, pay a fee, obtain a ticket from the machine and display it on the dashboard of their vehicle. "Multi-bay" parking systems were also used for on-street parking. An electronic parking meter similar to a pay and display meter was installed for a series of numbered parking bays. Members of the public were required upon parking their vehicle, to walk up to the parking meter and pay a fee corresponding to the length of time they wished to park. The equipment used in this method was similar to the equipment for "pay and display" parking, save and except that the person parking their vehicle did not need to display a ticket. These conclusions as to the state of common general knowledge are based on the evidence of Messrs Schneider and Gladwin.
559 The evidence as to trends towards the use of technology and automation in the parking enforcement industry, by May 2004 was as follows. First, personal digital assistants, or PDAs, were competing with the Autocite handheld computer and replacing handwriting in carbon copy books for the issuing of parking infringement notices. Secondly, parking meter technology was improving and those improvements included the introduction of multi-bay machines, networked meters and payment by credit card. Thirdly, the integration of infringement data with council's back-office systems was becoming more streamlined. There were no sensors used in parking enforcement before and at the PD. Nor is there any evidence that any person working in the parking enforcement field knew or considered that sensors could be used as an alternative to chalking. Mr Gladwin said that it never occurred to him before Mr Welch approached the City of Maribyrnong and proposed the trial of the POD System that a sensor detection system could be used as an alternative to chalking. Mr Gladwin said that, to his knowledge, such a proposal in parking enforcement had not previously been put forward. Mr Schneider said that, to the best of his recollection, the earliest date upon which he became aware that companies or persons were using or investigating or developing the use of sensor devices in parking enforcement was in about late 2005 or 2006 when he heard about a system called "METERI" which was subject to trials in New Zealand. Mr Hawkings did not give evidence that he was aware of sensors before and at the PD or that sensors could be used in parking enforcement or in vehicle overstay detection.
560 There was evidence about the extent of automation in the parking enforcement field before and at the PD and the extent to which those with the common general knowledge in the field anticipated that that process would continue. I do not think at the end of the evidence that any clear picture emerged.
561 Mr Gladwin did not consider it inevitable that the identification of parked vehicles which had overstayed would eventually become fully automated.
562 By contrast, Mr Hawkings considered that it was inevitable that all stages of the parking enforcement cycle would eventually become fully automated. He did not know the timeframe over which this automation would occur. He was of this view because of the rapid rate of technological development, the uptake of technology in the second and third stages of parking enforcement, and the increased efficiency and cost savings from the use of technology in those stages. He also considered that councils were keen to introduce technology that functioned as a "one stop shop" combining multiple stages of a process into a single, streamlined process. Mr Hawkings expanded on these views in his oral evidence. He referred to the following: (1) the transition from written to typed infringement notices; (2) improvements in user interface and keyboard layout in the PDA over the Autocite device; and (3) the transition from manual parking meters with a dial to electronic parking meters with digital screens.
563 However, as VMS correctly pointed out, Mr Hawkings' examples were tied to improved efficiency, rather than the level of human intervention in the process of parking enforcement because in each case, a parking officer had to observe the vehicle or read the expiry sign on the meter to determine vehicle overstay. Mr Hawkings gave the following evidence:
What did you mean by "fully automated"?---What I meant by "automated" there was it was a more efficient way of issued a parking infringement notice to an illegally parked motor vehicle. By moving away from the first stage of handwritten and the second stage of the Autocite to a technologically advanced device which would help the officer be a little bit more efficient, it would streamline the process and, in my opinion, become a fully automated system.
I see. And so in your interpretation - to your understanding of automated and fully automated, is that a human is involved with the process. Is that correct?---That's correct. And it is my view in parking that a - that a human should be involved at all times in the issuing of an infringement notice.
564 I turn now to address the common general knowledge of sensors as at the PD.
565 Mr Pieloor, whose qualifications are described below (at [594]-[596]), said that, while he was aware that technologies such as sensors, timers, cameras and image processing software existed before May 2004, he was not aware that any of these technologies were used in Australia or elsewhere to enforce time restrictions in parking spaces. Any solution based on sensors, timers, cameras or image processing technologies would, to Mr Pieloor's knowledge, be a new enforcement method. More generally, he said that as at May 2004, he was aware of a broad range of sensing devices and of the principles of electrical engineering that governed their operation, including inductive sensors, capacitive sensors, infrared sensors (both time of flight and interruption), pressure sensors, video cameras, radar and ultrasonic sensors. Mr Pieloor referred to seeking to improve existing systems and methods in free or paid parking and, as an alternative, investigating different technologies, including the use of "sensors, timers, signalling and/or image processing and associated reporting and enforcement mechanisms". Mr Pieloor said that one of the sensors it may be possible to investigate was the use of an inductive loop sensor.
566 Mr Spirovski gave evidence of his knowledge of sensing transducer technology as at May 2004. In his experience, sensing transducers, like most technological components, generally became progressively cheaper, smaller, more accurate and reliable and more energy efficient over time as the technology improved. He said that that was the case well before 2004 and remained the case today. The components have been integrated or packaged into single chips or modules. Mr Spirovski was, in addition to the sensing transducers identified by Mr Harcourt (i.e., light/optical transducers, sound transducers, magnetic field transducers, accelerometers, temperature transducers and capacitive sensors), aware of hydrophones, electro-magnetic sensors (for example, pulse induction devices, as opposed to inductive loops) and thermal transducers. He was also aware of "light or optical transducers": cameras and other image sensors. As at May 2004, Mr Spirovski was aware of different types of magnetometers, for example, flux-gate magnetometers and Hall-effect sensors. The magnetometers of which Mr Spirovski was aware in May 2004 were "large and inefficient devices as compared to magneto resistive magnetometers". In Mr Spirovski's opinion, Hall-effect sensors were smaller, but not suitable to measure the earth's magnetic fields. As at May 2004, Mr Spirovski was not aware of compact low power magnetometers of the type used in the patents. Mr Spirovski said that he noted that a magnetometer measures magnetic fields and that some magnetometers can measure only a changing magnetic field (to be distinguished from a change in the magnetic field). Other magnetometers can measure both static and changing magnetic fields, for example, Hall-effect sensors, flux-gate magnetometers and magneto-resistive magnetometers. Mr Spirovski said that as at May 2004, he was aware that magnetic sensors could detect the magnetic field of an object, such as a ship. He first became aware of compact low power magnetometers in around 2006. He had not turned his mind, and he was not aware of the use of magnetometers to detect the presence of vehicles such as cars. He said that using a magnetometer in this way is an indirect way of sensing, in that it involves sensing a vehicle's disturbance of the earth's magnetic field as opposed to any measurement of the magnetic field of the vehicle. Mr Spirovski first became aware of compact magnetometers to detect the presence of vehicles like motor vehicles when he was engaged in the VMS 2013 proceeding.
567 Mr Spirovski explained in his oral evidence that as at May 2004, he was aware that magnetometers measure magnetic field, but he was not aware that a magnetometer could detect metal objects or that they were used to detect objects that influence magnetic fields. Mr Harcourt on the other hand, said that he agreed with Mr Spirovski that magnetometers are really detecting or measuring the earth's magnetic field, but the fact that the field would be distorted by pieces of metal, and particularly a large piece of metal like a vehicle, was obvious to him.
568 Mr Spirovski said that he was aware at the time he gave evidence that magnetometers of the type disclosed and claimed in the patents had been available since 1996. He said that if he had a design project in May 2004, it was his practice to consider new technologies and that one source of informing himself would be to explore existing products made by well-established manufacturers. Mr Spirovski would have considered a sensor-based solution to the problem in May 2004, but he would choose an RF mixing device or a pulse indicator device over other sensors.
569 Mr Stamp said that he was aware of magnetometers in 2004. However, his experience of them to that date was large scale, that is, around one metre in width or larger, devices for use in measuring variances in the earth's magnetic field in relation to geodetic events. He only became aware that magnetometers were available in a smaller size suitable for deployment in a system such as a parking overstay detection system as a result of his involvement in the opposition in the Patents Office.
570 Mr Harcourt was the only electronic engineer who was aware of smaller magnetometers at the PD. He had used a type of magnetometer called Hall-effect sensors before May 2004. He said that the Hall-effect sensor was installed next to a motor as part of a feedback loop. When the motor was moving, the sensor counted the pulses in the magnetic field lines of the motor to ensure it was moving as instructed and had not stalled. That did not relate to a project involving parking enforcement. Mr Harcourt gave the following evidence (at T636):
MR COBDEN: And I just want to suggest to you that you didn't know of a magnetometer as at May 2004 that had been used to do the following things or recommended to do the following things: measure presence or absence of a vehicle from underground and small enough to be housed in a self-contained unit with battery power.
MR HARCOURT: Look, I - I knew of them. I had not used them, but - but I had some - I had some knowledge.
MR COBDEN: Thanks.
MR HARCOURT: Just not detailed knowledge.
571 Mr Spirovski said that Hall-effect sensors not only do not measure the earth's magnetic field, they are typically designed to measure static fields and that they would not be suitable in any way in this application. Mr Harcourt said that Hall-effect sensors could well be suitable, but it would not be his preference although it could work.
572 With respect to magnetic sensors and inductive loop sensors, inductive proximity sensors and magnetometers were part of the common general knowledge before and at the PD. However, inductive loop sensors were not suitable for the type of application involved in the invention. As to inductive proximity sensors, I deal with the knowledge as to availability of these devices in connection with Mr Stamp's evidence. As to magnetometers, although an appropriate magnetometer in terms of size and suitability was available, I am not satisfied on the evidence that that availability was part of the common general knowledge.
573 I turn now to address the evidence of Mr Stamp who was, as I have said, SARB's lead witness on lack of inventive step.
574 Mr Stamp is a director of Blue Curve Group Pty Limited (Blue Curve) which he described as "a systems engineering and project management consulting company specialising in medical device and diagnostic device product development".
575 As I have said, Mr Stamp has specialised knowledge in the field of electronics and communications engineering technologies. He made two statutory declarations in 2014 in the opposition proceedings in the Australian Patents Office, one on 28 May 2014 and the other on 5 June 2014. The second statutory declaration was not read in this proceeding and I will refer to the first statutory declaration as simply "the statutory declaration". Mr Stamp prepared a 23 page report as part of his engagement in the opposition proceedings and that report was tendered in this proceeding.
576 Mr Stamp holds a Bachelor of Engineering (Electronic and Communications Engineering) with Honours from the Royal Melbourne Institute of Technology which he obtained in 1992. In the course of his undergraduate degree, he specialised in RF design, satellite communications and network engineering technologies. Mr Stamp has carried on business through Blue Curve since 2010. From July 2005 to August 2010, he was involved in projects relating to the design of diagnostic medical devices. As Mr Stamp himself says in his statutory declaration, since 2005 he has worked exclusively in the field of medical devices.
577 Mr Stamp described his employment from 1992 to 2005 in detail. Of relevance for present purposes, is that between April 2004 and July 2005, Mr Stamp was employed by Transol as a hardware manager. Transol was an Australian-based company which developed red light camera systems for detecting and issuing tickets for traffic violations with systems deployed mainly in the United States of America. As a hardware manager at Transol, Mr Stamp managed the manufacturing, testing and roll out of red light camera systems. He worked closely with a team of engineers and designers. Mr Stamp said that a company called Redflex was at the technological forefront in the field of red light detection systems.
578 The Transol system detected traffic violations using a video camera. The Redflex system was based on the use of inductive loop technology, which Mr Stamp described as using "a magnetic field to detect the presence of cars over a crossing and correlated that data with data relating to the status of the lights (that is, whether it was red or not)". Mr Stamp said that the inductive loops used by Redflex were placed in the surface of the road.
579 It is to be noted that Mr Stamp had one month's experience with Transol before the PD.
580 In 2014, Mr Stamp was asked by Monks IP to address a particular problem. The background to the problem is taken from the First Patent and is as follows:
Demand for on-street parking spaces in today's modern cities often exceeds supply, which necessitates rationing of the parking resource by implementation of time restrictions. Parking time restrictions typically vary according to the competing needs and demands of a given area. Time restricted public parking spaces may require the payment of a fee or be free of charge. Parking meters or similar devices may be installed to collect fees. In any case, time limits are applied to parking spaces to ensure equitable sharing of access to a limited public resource to promote the interests of the community.
Enforcement of time restrictions in public parking spaces is a central element of any effective parking management program. Effective parking management requires regular and consistent enforcement. However, existing methods for identifying vehicles that have exceeded a parking space's time limit are inefficient. For example, a traditional method of detecting vehicles that have exceeded a parking space's time limit is to manually place a chalk mark on a tyre of each of the vehicles parked in a specific zone and then return at an appropriate time to check if any of the vehicles with "chalked" tyres are still parked. Some of the disadvantages associated with this method are:
• each parking space must be visited at least twice (usually on foot),
• the two visits must be timed to match the time restriction plus any grace period allowed by the enforcement authority,
• parking spaces within the same general area that have different time limits (e.g., 1-hour & 2-hour) must be enforced separately, and
• The system can be defeated simply by either by rubbing off the chalk mark or moving a vehicle to a different parking space after a parking officer has "chalked" types of cars in a particular area.
581 The question Mr Stamp was asked to address was as follows:
Assume you are provided with this background in May 2004. Using only the background knowledge you had at that date, and having regard only to the information you would regularly have considered at that date, can you think of a solution that would overcome or at least ameliorate the foregoing disadvantages?
582 Mr Stamp's report addresses that question.
583 Mr Stamp said that there were four options and each of them involved the use of sensors. He described the options in the following way:
• A system where the parking space sensors are wired to a local site controller, and then potential violation information is transmitted to a central dispatch location, which communicates with a parking officer in the field and co-ordinates the enforcement response.
• A system where the parking space sensors are wired to a local site controller, and then potential violation information is transmitted directly to a parking officer in the field who initiates the enforcement response.
• A system where the parking space sensors are wirelessly connected to each other in a "daisy chain" and then wirelessly to a local site controller, which transmits potential violation information is [sic] directly to a parking officer in the field who initiates the enforcement response.
• A system where the parking space sensors are wirelessly connected to each other in a "daisy chain" and there is no local site controller. Potential violations are determined within the sensor chain network itself and communicated directly to a parking officer in the field who initiates the enforcement response.
584 Mr Stamp favoured the last option because it involved the quickest, lowest cost installation in part because of the reduction or even elimination of the need to cable between sensors, and the lowest operating costs.
585 In para 11.2 of his report, Mr Stamp set out what he described as a general high-level solution architecture. He states that this provided an overview or summary of all the solutions considered possible. He said that the solution components shown in the Solution Diagram (para 11.3) may be included or excluded and combined in a number of ways to create "a specific parking detection and enforcement response architecture".
586 In terms of detectors or sensors, Mr Stamp identified five possibilities and they are as follows: (1) inductive loop sensor; (2) inductive proximity sensor; (3) ultrasound sensor; (4) optical/infrared detector; and (5) video or time-lapse camera.
587 Mr Stamp said that any of the sensors could be used in any number of combinations to detect the presence of vehicles in a particular set of parking spaces. He considered the inductive loop sensor and the inductive proximity sensor to be the most viable in terms of cost, ease of installation and specificity in detecting vehicles. As to the advantages and disadvantages of those two types of sensors, he said the following:
[C] Inductive Loop - traditional road loop, as used for traffic light systems, cut into the surface of the parking spot. Uses an oscillating electromagnetic field to detect when large metallic body place above it - vehicle presence detection. Detects one vehicle space per sensor.
Pros: Reasonable selectivity - not susceptible to false triggering.
Cons: Large install cost - cutting in the loops to the road surface.
[D] Inductive proximity sensor - detects presence of vehicle using an oscillating electromagnetic field. This is similar in principle to the inductive loop, but smaller to implement and potentially easier to install. Detects one vehicle space per sensor.
Pros: Reasonable selectivity - not susceptible to false triggering. Low-Medium install cost - could be cut into the surface minimally, or even glued on top. Better install costs than inductive loops.
Cons: May require specific implementation or tuning for this application to ensure adequate sensitivity - not considered a major issue.
588 Furthermore, Mr Stamp said that of these two sensors, the inductive proximity sensor would be the easiest to install and was most likely to involve lower costs. This means that it was the preferred sensor for most parking detection applications outlined in his report.
589 Mr Stamp then turned to consider transmission solutions and his solutions are set out in three figures which I reproduce below:
11.7. Localised Reporting Network - wired with central controller
11.8. Localised Reporting Network - wireless with central controller
11.9. Localised Reporting Network - wireless with no central controller
590 Mr Stamp identified the third transmission solution shown in para 11.9 as involving the quickest installation and at the lowest cost.
591 Mr Stamp addressed the power for the transmission solutions and, in relation to the solution shown in para 11.9, he states that the power for the sensor chain would be provided from inbuilt solar chargers in the sensors, or an inductive charging cable.
592 In response to a question from counsel for VMS suggesting that his report was influenced by knowledge he acquired after May 2004, Mr Stamp said the following:
… my frame of mind coming into this was very much one of an engineering solution framework. So … I started by imagining a range of possible solutions and then classifying those into groups and then basically trying to explain how they might be realised in the real world as particular architectures. The efficiencies and drivers around each of those choices was mine to make and was based on my general knowledge of the - particularly based on my knowledge of designing and installing red light camera systems and having some sense, I think, of the economics related to installation and operation of systems in general. …
593 I have reached the conclusion that Mr Stamp's opinions do not establish that the invention described in the patents were obvious or very plain. Those opinions do not establish that the skilled addressee would be led directly or as a matter of course to the invention. Before setting out my reasons for reaching that conclusion, it is necessary to refer to evidence given by Mr Pieloor, Mr Harcourt and Mr Spirovski.
594 Mr Pieloor is employed at Sonartech ATLAS as a senior software engineer and that position involves providing leadership and technical expertise for embedded hardware and software development for sonar signal processing related products used in the defence sector.
595 Mr Pieloor was engaged by VMS in 2014 in the opposition proceeding before the Australian Patents Office. He made a statutory declaration in that proceeding on 11 September 2014.
596 In 2014, Mr Pieloor had had approximately 18 years' experience in the field of product development and technology solutions for embedded platforms, primarily in the subscription and pay-per-view television industry. At that time, he was employed as a solutions architect at Pace Australia, a business involved in the design and building of embedded hardware systems, including set top boxes and modem and router components. Mr Pieloor holds a Bachelor of Engineering majoring in Computer Systems from the University of Tasmania, a Doctor of Philosophy involving a thesis in the field of computer engineering, specifically in the area of performance analysis of queuing systems for telecommunications networks. Mr Pieloor completed a Master of Engineering Studies between January 2011 (part-time) and 2014. He described in his affidavit his employment between October 2005 and September 2014, including as a consultant software engineer, a software architect, a senior software engineer and a solutions architect. He also described his employment from 2016 in a contract role as a senior software engineer.
597 In his statutory declaration, Mr Pieloor addressed the problem which had been presented to Mr Stamp and he addressed Mr Stamp's response to the problem. He took a very different approach to that taken by Mr Stamp.
598 Mr Pieloor expresses the opinion that he would not have been directly led by the problem statement alone before May 2004 to try any particular approach as a matter of course and, in his opinion, nor would any other suitably qualified engineer. The decision to pursue any particular approach would have been heavily influenced by the parameters fixed by the client, a matter which is not addressed in the identification of the problem. Mr Pieloor said that in the context of a client seeking to improve the efficiency of its parking enforcement practices and, in particular, to overcome one or more disadvantages associated with chalking, the first step he would have taken would be to consult with the client to understand the problem from their perspective and to identify the specific goals and boundaries or limitations that apply to any solution. He identified the following questions as critical questions that he would ask: (1) how does the client measure efficiency in parking enforcement? (2) what level of improvement in efficiency is the client seeking? and (3) what cost is the client prepared to incur to achieve the desired level of improvement? Mr Pieloor considered that these questions would, in turn, require consideration of the following seven matters: (1) what are the client's budget constraints for capital costs and applicable operational and maintenance costs? (2) what are the client's personnel requirements and resources? (3) does the client have any other commercial requirements? (4) does the client have any governance, audit or reporting requirements? (5) what are the applicable regulatory limitations? (6) what are the scalability requirements, that is, the number and kind of parking spaces, the ease of adding more parking spaces, etc.? and (7) what level of accuracy of vehicle identification is required, that is, is a reduction in the number of false positives and false negatives desired and, if so, what level of reduction would be acceptable?
599 In considering possible solutions, Mr Pieloor said that in seeking to improve existing systems and methods in free or paid parking, a variety of different technologies could have been investigated to try and come up with new methods of enforcing time-limited parking. The technologies included the use of sensors, timers, signalling and/or image processing and associated reporting and enforcement mechanisms. He gave the following example:
… it may have been possible to investigate the use of an inductive loop sensor together with a mechanical, electrical or digital timer and an indicator (such as a light or mechanical flag installed at the parking space, or an adjacent display board) to detect vehicle presence and indicate when a vehicle has been present for longer than the permitted duration. An inductive loop sensor uses a loop of wire or similar conductive material to generate a magnetic field and to measure how this field changes over time (such as when a vehicle enters or exits the sensing range of the loop). …
600 Mr Pieloor said that he was aware before May 2004 that inductive loop sensors were used for traffic light control. In Mr Pieloor's opinion, the costs involved in the research and development work needed to implement a sensor-based technology of this kind for the purpose of parking enforcement were likely to have been significant.
601 Mr Pieloor does not agree with Mr Stamp that he would have been directly led as a matter of course before May 2004 to try any of the solutions proposed in Mr Stamp's report. He provides a number of reasons in support of that opinion. The problems Mr Pieloor identifies mean that he would not have investigated any system of the kind proposed by Mr Stamp before May 2004 without first gaining a better understanding of a client's specific needs and constraints or limitations, and without giving appropriate consideration to whether a client's desired efficiency of improvement could be achieved by improving existing enforcement methods at substantially less cost and complexity. He said, by way of example, that he would conduct an analysis of whether providing patrollers with mopeds, electric bikes, golf carts or similar powered transport would be likely to increase the time efficiency of the chalking method by overcoming the disadvantage of officers having to visit each parking space "on foot". The provision of powered transport to officers would have had little associated research and development or infrastructure costs, given mopeds etc., were readily available commercially before May 2004. However, such equipment would have had additional capital and operational costs. Mr Pieloor said whether this approach would have improved efficiency to the required level at an acceptable cost, would again require investigation and consultation with the client.
602 Mr Pieloor has never worked in traffic enforcement and he did not know much about cost or time-efficient methods of parking enforcement. He has never considered work to improve parking efficiencies. He made it clear that, as far as the problem is concerned, the solution he would adopt would depend on the level of efficiency the enforcement authority wanted to achieve and at what cost.
603 SARB is correct to point out that despite Mr Pieloor's opinions as described above, he immediately identified that it would be possible to use sensors, timers, signalling and/or image processing and associated reporting and enforcement mechanisms. Mr Pieloor agreed in cross-examination that whether the use of an inductive loop sensor was an appropriate solution was, like the other solutions he proposes, dependent on the results required and the client's budget. Mr Pieloor acknowledged that he was and is not an expert in sensors. He was aware that inductive sensors were installed in groups in the ground, that is, subterraneously. He agreed that if he were to be engaged to undertake a task of determining appropriate sensors, he would have undertaken research to find the best sensor available in terms of costs and efficiency. That research would involve:
Either calling vendors or doing some sort of trade study, or finding a suitably qualified expert and asking them directly.
604 He would be concerned about battery life and would direct his attention to efficient power operations for sensors.
605 Mr Pieloor said that a counter could be used instead of a time of day clock for a car space with a fixed one hour limit. Nevertheless, he accepted in cross-examination that a time of day clock may be required for circumstances where the parking limits change over time and possibly for enforcement purposes to issue an infringement notice. He was clear that a time of day clock would work. Mr Pieloor agreed that as an alternative to indicators to a parking officer that there has been an overstay of a vehicle by way of a light or a mechanical flag or a display board, another way of doing the same thing is by sending a message to a parking officer. He agreed and he said that he would have known that as at May 2004. In other words, he agreed that a digital means would work.
606 Mr Harcourt was asked to provide his opinion as to how he would have designed and made a system for detecting unauthorised vehicles as at May 2004. He first addressed the design of the sensor. He said that he would have chosen a sensor which had the following features: a magnetometer as the sensor transducer, an off-the-shelf processor, an off-the-shelf radio receiver and an antenna, and a non-rechargeable battery and a power supply block. With respect to his choice of a magnetometer, Mr Harcourt said that he would have chosen this as the sensor because magnetometers are effective at detecting large metal objects such as vehicles and that as at May 2004, they were relatively cheap, could be purchased off-the-shelf and were very small so they could be installed cheaply and easily without significantly disrupting the road surface. They are able to be fully buried protecting them from vandalism and general wear and tear whilst at the same time maintaining their functionality.
607 Mr Harcourt addressed the communications platform and said that he would have experimented with Bluetooth. If this was not successful, he would have attempted to develop a proprietary communications platform on another unlicensed UHF band and, if this also was not successful, he would have chosen a licensed UHF band. The communications platform would have been bi-directional for the reasons Mr Harcourt gave in his affidavit and which it is unnecessary for me to set out. The sensor would have been embedded in the ground. It would have been sealed in a rigid plastic enclosure to protect it during transportation and from the elements, including ground water, once installed.
608 With respect to the rest of the system, Mr Harcourt would have considered two different configurations as a matter of course, in the expectation that he would be able to develop a system using either configuration. He said that the choice of which option to implement would be a matter of design choice based on personal preference and the requirements of the client, particularly in relation to the client's appetite for risk and costs considerations.
609 The first option was one of fixed gateways (Option 1). Option 1 involved wire gateways fixed in place in permanent range of the various sensors they service. These gateways would be constantly awake and ready to receive wireless radio signals. The sensors would wake themselves up when they wanted to send a communication to the gateways. The base stations would either be wired to mains power or have a solar panel and a large enough battery that they could be constantly "awake" and ready to receive messages from the sensors. Communications would travel from the gateways to a back office system located on a server, either in a data centre or in the facilities of the company providing the service, using either the cellular network or a wired internet connection. The back office system would make determinations about various matters, including whether the vehicle had overstayed the allowable parking time limit for the relevant parking space. The back office system and parking officers on the street could interact with the latter using an off-the-shelf PDA, and the system could send notifications to alert the parking officers to overstaying vehicles through a beep or alarm.
610 Mr Harcourt said that the system comprising Option 1 is the system he would implement in the first instance because of the benefits he could see to using this approach. He identified some disadvantages with Option 1. He recognised the option would require the installation of substantial infrastructure and, therefore, it would involve significant costs. Mr Harcourt said that whilst he was of the view that Option 1 is likely to represent a better long term solution, he accepted that in practice, clients such as local councils would prefer to take an incremental approach to the adoption of new technology.
611 Mr Harcourt's second option involved mobile data terminals (Option 2). Parking officers would carry a PDA or similar type of device around with them as they walked or drove around the streets. The PDA would communicate with the sensors when it came within range of them and Mr Harcourt said he would employ an interrupt-driven "wake-up" scheme. This would allow the sensors to remain in "sleep mode" for the majority of the time and only wake up when a PDA came into range, thus decreasing their power consumption and increasing battery life. The sensors would send data to the PDA relating to vehicle presence or vehicle overstay and the PDA would be loaded with a custom application allowing the parking officer to view information received from the sensors on the screen of the PDA and decide what action to take. If the parking officer decided to issue a fine based on information received from the sensors, they would already be in place to do so.
612 Mr Harcourt outlined the advantages of Option 2 which included significantly fewer upfront installation costs than Option 1. He also identified the disadvantages of Option 2 which included the need to update multiple devices - either the PDA or the sensors - if the council changed the applicable parking time limits.
613 Mr Harcourt said that in the case of Option 2, either the sensors themselves or the PDA could determine vehicle overstay. The system would work using either option, so the decision of which of the options to implement is a matter of "design choice based on personal preference and the requirements of the client". In the case of his Option 2(a), the sensors determined vehicle overstay and in the case of his Option 2(b), the PDAs determined vehicle overstay.
614 Like Mr Stamp, Mr Harcourt performed an exercise whereby he compared the integers of the method, system and apparatus he described and the integers of a number of claims in the First Patent and a number of claims in the Second Patent. He did not address all the claims in the two patents.
615 I do not consider that I can place any significant weight on the evidence of Mr Harcourt for the reasons which follow.
616 First, in Mr Harcourt's case, there is a substantial risk of hindsight bias. Mr Harcourt was given the patents before he designed and made his system for detecting unauthorised vehicles as at May 2004. Furthermore, he was familiar with SARB's apparatus which is alleged to infringe the patents. In December 2010, Mr Harcourt commenced doing work for SARB for an initial period of nine months and then for a further three months. He provided advice to SARB in relation to the design of the hardware and firmware components of SARB's vehicle detection product. He was not involved in providing advice on all aspects of the system, but he knew that SARB's in-ground sensor unit was self-contained, battery operated and equipped with RF and antenna circuitry. He was aware that it was installed subterraneously and that the overall purpose of the product or system was the detection of vehicle overstay in car parking spaces.
617 Secondly, Mr Harcourt preferred Option 1 and said that this is the system he would seek to implement in the first instance. This was a matter upon which the experts were agreed. Mr Spirovski agreed that Mr Harcourt's Option 1 had the benefits that Mr Harcourt identified and that he would also choose to implement a centralised system in the first instance. Mr Spirovski identified what he considered to be the advantages of a centralised system.
618 The significance of Mr Harcourt's preference for Option 1 and Mr Spirovski's agreement with that opinion is that, as Mr Spirovski said, the design which Mr Harcourt develops as a result of his design process is different from the methods, systems and apparatus described and claimed in the patents, both in terms of the particular set of systems, functions to be supported and how the components are organised to support their functions. Although Mr Harcourt said that his Option 2 involved "significantly fewer upfront installation costs than Option 1", and was "more compatible with existing practices for determining vehicle overstay", he agreed that he was no more familiar with the issues facing councils in operating parking enforcement systems than the ordinary motorist or pedestrian.
619 Thirdly, there is force in Mr Spirovski's evidence questioning assumptions made by Mr Harcourt in addressing the problem put before him. As Mr Spirovski states, Mr Harcourt assumed that an "unauthorised vehicle" is a vehicle which has overstayed and that the system is for on-street parking. As Mr Spirovski said, those assumptions affect the range of options to be considered in designing and making a system for detecting unauthorised vehicles.
620 Mr Harcourt goes straight to a sensor-based solution and, in particular, a magnetometer. He described a magnetometer as a device which detects static magnetic fields and typically the earth's magnetic fields. It is to be contrasted with inductive loops which only measure changes in magnetic fields. Mr Harcourt expresses the opinion that magnetometers are commonly used to detect objects which influence magnetic fields, such as coils and large metal objects such as vehicles. Mr Harcourt used a type of magnetometer called Hall-effect sensors before May 2004, including in a project he worked on at Robert Bosch while he was a student. The project involved a Hall-effect sensor being installed next to a motor as part of a feedback loop. When the motor was moving, the sensor counted the pulses in the magnetic field lines of the motor to ensure it was moving as instructed and had not stalled. In his oral evidence, Mr Harcourt agreed that Hall-effect sensors were not suitable to measure the earth's magnetic field. Mr Spirovski agreed with this opinion and said that Hall-effect sensors would not be suitable in any way for "this application".
621 Mr Spirovski expressed the opinion that, as at May 2004, there were many alternative approaches which could have been investigated by someone designing a system for detecting unauthorised vehicles. He would not have immediately opted for a sensor-based solution. He considers that the installation of multiple sensors would be a more expensive choice than the option of improving or adapting existing systems involving the manual chalking method and PDAs. Mr Spirovski said that he would consider a sensor-based solution as one possible approach, but would not have considered a sensor-based solution as the only approach. A factor which would affect whether he would pursue a sensor-based solution would be the particular requirements of the system to be designed. Furthermore, he would not have immediately opted for any particular type of sensor and would not have immediately opted for a subterraneously installed device or sensor. Mr Spirovski also pointed out that there were other choices as at May 2004 to the use of UHF radio communications to communicate data from the sensors. He refers to infrared communications as another option available for wireless communications. Mr Spirovski comments that Mr Harcourt does not provide any reasons for selecting UHF radio communications over other forms of wireless communications available as at May 2004.
622 Mr Harcourt favoured a non-rechargeable battery, but as VMS pointed out, whilst that may be a sensible and logical choice to employ in the case of a sensor-based solution buried underground, there are other solutions to a sensor-based solution.
623 As I have said, Mr Harcourt performed a similar exercise to Mr Stamp in identifying the features of his system and comparing them to the integers in claims in the patents. As with Mr Stamp, that does not advance SARB's case unless his underlying opinions are accepted. It may also be noted, as VMS pointed out, that Mr Harcourt does not address claims 5, 9, 20, 25 or 27 of the First Patent and claims 5 and 21 of the Second Patent. In addition, in his claims charts, he relies on features in Option 2 of his design solution even though he expressed a preference for Option 1 and would have implemented that option first.
624 In my opinion, Mr Stamp's evidence does not establish that the invention lacked an inventive step for the following reasons considered as a whole.
625 First, it is necessary to consider Mr Stamp's skills and experience. Mr Stamp has skills and experience in wireless sensor networks, but he has never worked in designing a parking infringement system and he did not know what technology was used in that field. Whether it is correct to characterise Mr Stamp's work with red light camera systems for approximately one month before the PD as a related field and to recognise some knowledge he had of the Redflex system, Mr Stamp himself nevertheless accepts that he has had no experience in the field of parking enforcement technology. These matters are relevant to the weight to be given to Mr Stamp's evidence (E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Limited [2005] FCA 892; (2005) 66 IPR 462 at [130] per Emmett J).
626 Secondly, Mr Stamp makes no reference is his report to common general knowledge in the field of parking enforcement. As I understand it, he is not put forward by SARB as part of a team with a member who has direct knowledge of parking enforcement methods and of the common general knowledge operating in that field before and at the PD. His expertise relevant to the problem is in wireless sensor networks and, although the problem did not direct him to a sensor-based solution, it is unsurprising, as VMS put it, that, in view of his expertise, he is led directly to a sensor-based solution. He gives no consideration, for example, to the other non sensor-based solutions or improvements to the existing methods identified by Mr Pieloor. None of the persons directly involved in the field of parking enforcement who gave evidence before me - Mr Schneider, Mr Gladwin and Mr Hawkings - gave evidence that as at the PD, they considered a sensor-based solution to overcome the existing problems.
627 Thirdly, it is unclear whether Mr Stamp limited his analysis to common general knowledge. His instructions invited him to have regard to (and only to have regard to) information he would have regularly considered (emphasis added) at the PD and in his evidence he said he had regard to his knowledge as a citizen and observations as a parking officer. Furthermore, his report indicates that he had some regard to material on the internet and it is unclear whether that material is part of the common general knowledge.
628 Fourthly, Mr Stamp's report is 23 pages in length and must have taken some time to prepare. Although the report identifies one architecture or solution to the problem as the quickest in installation time and, therefore, the lowest in terms of cost, and as involving the lowest operating costs, the report does present four architectures or solutions. In the case of the four architectures each involving a number of components, Mr Stamp advises that for some of these components, a number of interchangeable solutions are possible. The solution components for detection, transmission and response are variations and "may be included or excluded or combined in a number of ways to create a specific parking detection and enforcement response architecture". Mr Stamp advances five options for sensor devices which "could be used in any number of combinations to detect the presence of vehicles in any particular set of parking spaces" and he identifies two as the most viable in terms of cost, ease of installation and specificity in terms of detecting vehicles. Mr Stamp's inductive loops were large inductive loops cut into the road surface. As VMS pointed out, it is not clear to what extent the practice of covering the cut or hole with a bitumen or adhesive solution was a practice Mr Stamp observed in Australia as distinct from the United States. Mr Stamp had not considered whether the inductive loop might be contained in housing along with other elements of his system. An optical or infrared detection requires an optical path to a vehicle in order to work and, therefore, cannot be subterraneous. A video or time lapse camera could not be subterraneous and would need to be either beside the vehicle or have an overhead view of the vehicle. Mr Stamp's preferred option was of an inductive proximity sensor because of, inter alia, lower installation costs and the fact that it could be placed in a hardened, plastic dome enclosure and glued to the top of the road. In this context, it is worth noting the evidence of Mr Harcourt that he did not know of any person as at May 2004 using inductive loops of the type used to detect vehicles at traffic lights in a self-contained battery-powered unit and that was because, for mechanical and costs reasons, it was easier to follow the existing practice of burying the wire in the ground.
629 Fifthly, it is relevant to consider the process Mr Stamp went through before he reached his preferred solution. He identified four solutions and in his oral evidence, he said that as he worked through his report, it became apparent to him that there would be significant costs associated with the roadside installation of roadside controllers and it might be advantageous to have a system where there was no roadside controller required. Ultimately, he reached his preferred solution, having regard to low installation costs and low operating costs, but as Mr Pieloor pointed out, there are other relevant considerations for an electronics engineer such as the desired level of efficiency of parking enforcement to be achieved by the solution, the client's budget for installation costs and ongoing maintenance costs, the number and skill level of the client's personnel and resources, sealability requirements, whether the client has any governance or audit and reporting requirements and the level of accuracy in vehicle identification required. As Mr Pieloor said in cross-examination when it was put to him that cutting into the road was a "very expensive solution", the notion of very expensive certainly means non-trivial costs, but beyond that one would consider economies of scale and that cost as against the cost and value of the entire system.
630 The different perspectives of costs savings which may be taken by an electronics engineer in approaching the choice of a preferred system is illustrated by Mr Pieloor's evidence. He said that if he had been tasked with implementing one of Mr Stamp's solutions, he would have been led away from the fourth solution because he would have preferred centralising common hardware and logic at a local site controller and thereby minimising the amount of hardware at each sensor. He went on to express the opinion that installation and maintenance costs and the physical space requirements for the overall system could be reduced by co-locating common sensor hardware with other system components such as display boards, wireless transceivers and power supplies.
631 Sixthly, there are difficulties and uncertainties with Mr Stamp's solutions. For example, he said that in the case of battery-powered sensors, it may be necessary to conserve battery power by periodically operating the sensors, for example, for a short period once per minute. That particular example would not produce a reliable indicator of infringement because one vehicle may leave the parking space and another enter it in the intervening period. Another example is the provision of power to one of his two preferred sensors, the inductive loop sensor. These are large items which, when used in traffic light applications, cannot be powered by batteries. That is likely to be the case also in vehicle overstay detection and, as Mr Pieloor said if he was implementing Mr Stamp's solutions, he would examine whether or not a fixed or permanent power source could be used to provide power to the sensors. Finally and significantly, Mr Stamp's preferred sensor is the inductive proximity sensor and he said that they had been in place for many years in the industrial automation and control arena. He said that there were some longer range sensors that can detect at or beyond a distance of 100 mm. He did not know whether such sensors were available "off the shelf", but he expressed the view that if not, it would have been quite possible (to use his words) to take an inductive proximity sensor to detect something as large as a car at a range of 300-400 mm from the sensor. He explained in cross-examination that, although he did not know whether that was possible, "there were quite likely parts that could have done that but it would have required further research and selection to identify that".
632 Seventhly, Mr Stamp referred to his report as a report done at a concept design level and he identified the further research he would have carried out, including those with respect to sensors. He believes that he would have identified the magnetometer. I agree with VMS's submission that the evidence as a whole indicates that Mr Stamp's solutions required substantial further thought and experimentation and that gives rise to the possibility of trial and error, dead ends and the retracing of steps referred to by the High Court in Alphapharm at [58].
633 Finally, there is a matter for noting. I say that because if Mr Stamp's earlier opinions do not carry the day, the exercise he carried out in 2014 of comparing his solution with the integers in the Second Patent and the similar exercise in 2020 in relation to the First Patent do not advance SARB's case. VMS pointed out certain difficulties with his analysis in any event. There is nothing in that part of his report describing the fourth solution which sets out Mr Stamp's opinion as to the preferred sensor. One has to go back earlier in the report to identify this and the earlier solution contains a statement that any of the sensors described could be used in any number of combinations to detect the presence of vehicles in a particular set of parking spaces. It also emerged from cross-examination that Mr Stamp did not state expressly in his report matters he assumed based on his knowledge. Furthermore, Mr Stamp admitted in cross-examination that there was no single place in his report where all of the integers in claim 1 of the Second Patent (a method claim) are set out.
634 Taking all of these matters into account, I am not satisfied that SARB has established that the invention disclosed lacks an inventive step.
635 The skilled addressee would include both an electronics engineer and a person with expertise and experience in the field of parking enforcement before and at the PD. The skilled addressee would consider a range of options in addressing the problem, including but not limited to, a sensor-based solution. The option chosen would involve a range of considerations, including costs (installation and operation), the degree of accuracy required and available alternatives. Even if the skilled addressee was led directly as a matter of course to a sensor-based solution, I am not satisfied that that would have led to the invention. I have set out my reasons for concluding that Mr Stamp's evidence does not establish that conclusion. I am not satisfied that the skilled addressee would have been led directly as a matter of course to a magnetometer or an inductive proximity sensor for the reasons I have given in the section dealing with common general knowledge and I am not satisfied that the skilled addressee would be led directly as a matter of course to the system which is the invention.
636 In addition to these matters, this is a case in which secondary considerations are significant.
637 The invention disclosed and claimed represented a solution to a long-felt want of overcoming the drawbacks of chalking which had existed since at least the mid-1970's and which involved missed enforcement opportunities, revenue opportunities and a reduction in the availability of on-street parking for the general public.
638 The introduction of VMS's POD System in 2005, which is an embodiment of the patents, resulted in a paradigm shift. As Mr Gladwin said, the POD System was so effective at the City of Maribyrnong that the workers' union for parking officers regarded it as a threat to the workforce. At the time the system was introduced to the City of Maribyrnong, it generated a great deal of interest from local councils. Since the POD System was introduced in the City of Maribyrnong, Wilson Parking Technologies and SARB have also released sensor detection systems on the market and market their systems in competition with VMS as an alternative to chalking. Mr Hawkings said that he reported back to the Adelaide City Council on the POD System because it struck him as new technology at the time. He considered it to be innovative. He did not pursue it because of his policy at the time of waiting to see whether new developments were accepted.
639 The lack of inventive step ground of invalidity is rejected.