The Next Chapter in the Carpark Patent Saga: The Full Court’s Decision on Infringement and Best Method

SARB Management Group Pty Ltd T/A Database Consultants Australia v Vehicle Monitoring Systems Pty Limited [2024] FCAFC 6

Date: 9 February 2024

Court: Full Federal Court of Australia

Judge: Burley, Jackson and Downes JJ

9 February 2024

Full Federal Court of Australia

Burley, Jackson and Downes JJ

SARB partially successful in carpark overstay patent appeal

The Federal Court’s second patent decision of 2024 is a unanimous decision of the Full Federal Court relating to one of several long-running patent disputes in the field of carpark overstay detection.   In March 2023, Justice Besanko upheld the validity of two patents owned by Vehicle Monitoring Systems Pty Ltd (VMS), both entitled ‘Method, apparatus and system for parking overstay detection’.  His Honour also held that three versions of a vehicle detection and sensor system known as ‘PinForce’ sold by SARB Management Group Pty Ltd were infringing, with the first two versions infringing claims of both patents and the third version infringing only claims of one of the patents.  We reported Justice Besanko’s decision in an earlier blog.

Construction and infringement

SARB’s appeal to the Full Federal Court on infringement was confined to the finding regarding PinForce version 3 in respect of the one patent held to have been infringed by this version. Key to Justice Besanko’s infringement finding was the  construction of claim features directed to the step of determining whether a vehicle has overstayed, and particularly whether this determination is  carried out by the wireless ‘data collection apparatus’ (DCA) rather than solely by the ‘detection apparatus’ (DA) located beneath the carpark space.  Before Justice Besanko, all experts agreed that in the case of PinForce Version 3, all capability of determining overstay in the DA had been removed following a redesign.  The Full Court overturned  Justice Besanko’s decision finding that the claims should be construed to encompass a system where vehicle detection is determined only by the DA (not the DCA).  The effect of this change in construction was that the PinForce version 3 system fell outside the patent claims.

Best method

SARB also appealed the primary judge’s decision on validity, specifically his finding that SARB failed to establish that the two patents were invalid on the ground of best method.  Before Justice Besanko, SARB had  argued that the patent did not include the best method known to the patentee  of communicating data from the subterraneous DA using a functioning wake-up scheme because the patent did not describe the use in this scheme of a specific transceiver (the ASTRX2 transceiver), even though it was known to the inventor to have advantages which made it the best transceiver for communicating data from the subterraneous detection apparatus.   The Full Court, however, agreed with Justice Besanko that the invention disclosed in the two patents related to the wake-up scheme and not the wake-up scheme as carried out by a transceiver with particular features.   In reaching this conclusion, the Full Court emphasised the significance of the embodiments in the specification in identifying the invention, whereas SARB had focussed on the consistory clauses to the challenged claims.  The Court held the disclosure was adequate because the parameters of the wake-up scheme were clearly disclosed in the specification, and there was no evidence that transceivers other than the ASTRX2 could not meet these parameters.

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