Federal Court Rules on Patent Infringement for Vehicle Overstay Detection

OUTCOME: Allowed

FEDERAL COURT OF [APPELLANT]

[COMPANY] v [APPELLANT] [NAME] [APPELLANT] (No 8) [2023] FCA 182 File number: NSD 200 of 2019

Judgment of: BESANKO J

Date of judgment: 8 March 2023

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

Legislation: Evidence Act 1995 (Cth) s 136 Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) [NAME] Act 1990 (Cth) ss 7, 13, 15, 18, 22A, 40, 117, 120, 122, 123, 138 Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013 (No 1) (Cth)

Cases cited: [NAME] v [NAME] Association [COMPANY] [1928] HCA 10; (1928) 40 CLR 481 [NAME] v [NAME] [COMPANY] [2002] HCA 59; (2002) 212 CLR 411 [COMPANY] v [NAME] (No 2) [2012] FCA 748; (2012) 293 ALR 272 [COMPANY] v [COMPANY] (No 2) [2016] FCA 1238; (2016) 122 IPR 17 [NAME] v [NAME] [COMPANY] [2014] FCAFC 99; (2014) 226 FCR 324 [NAME] v [NAME] [COMPANY] [2015] HCA 30; (2015) 257 CLR 356 [NAME] v [COMPANY] [2012] FCA 1467; (2012) 98 IPR 424 [NAME] v [NAME] [COMPANY] [2010] FCAFC 75; (2010) 86 IPR 468 [COMPANY] v [COMPANY] [COMPANY] [2015] FCA 631; (2015) 251 FCR 127 [COMPANY] v [COMPANY] (No 3) [2012] FCA 1019 [COMPANY] v [NAME] (1936) 53 RPC 221 Collins v [NAME] [2007] FCAFC 152; (2007) 161 FCR 549 [COMPANY] v [COMPANY] (No 3) [2014] FCA 909; (2014) 312 ALR 705; (2014) 107 IPR 548 E I Du Pont de Nemours & Co v [NAME] & [COMPANY] [2005] FCA 892; (2005) 66 IPR 462 [COMPANY] v [COMPANY] (1992) 25 IPR 173 [NAME] v [NAME] [2005] FCA 67; (2005) 218 ALR 408; (2005) 64 IPR 506 [COMPANY] v [NAME] [APPELLANT] [COMPANY] [2000] FCA 1689; (2000) 51 IPR 531 [COMPANY] v [NAME] [APPELLANT] [COMPANY] [2002] HCA 21; (2002) 76 ALJR 816; (2002) 188 ALR 280 [NAME].[COMPANY] v [COMPANY] (No 2) [2008] FCA 746; (2008) 76 IPR 763 [NAME] v [NAME] [COMPANY] [1972] RPC 457 [NAME] [APPELLANT] [COMPANY] v [NAME] (UK) [APPELLANT] [2016] [NAME]; (2016) 120 IPR 406 [COMPANY] (Ireland) (No 2) [COMPANY] v [COMPANY] [COMPANY] [2018] FCAFC 71; (2018) 264 FCR 474 [NAME] (1971) [COMPANY] v [NAME] [COMPANY] [1978] HCA 61; (1978) 141 CLR 305 [COMPANY] v [COMPANY] [1999] FCA 345; (1999) 45 IPR 577 [COMPANY] v [NAME] [COMPANY] [2000] FCA 1349; (2000) 106 FCR 214 [COMPANY] v [NAME] [COMPANY] [2018] FCA 1192; (2018) 135 IPR 220 [COMPANY] v [NAME] (1996) 35 IPR 643 [COMPANY] v [COMPANY] [2005] FCA 1474; (2005) 67 IPR 68 [COMPANY] v [COMPANY] [2005] [NAME]; (2005) 222 ALR 155; (2005) 65 IPR 86 [NAME] [APPELLANT] [COMPANY] v [NAME] [COMPANY] [2001] [NAME]; (2001) 207 CLR 1 [NAME] v [NAME] [COMPANY] [2016] FCAFC 27; (2016) 247 FCR 61 [NAME] [COMPANY] v [NAME] [COMPANY] [2004] HCA 58; (2004) 217 CLR 274 [COMPANY] v [COMPANY] [No 2] [2007] HCA 21; (2007) 235 CLR 173 [NAME] v [NAME] ([APPELLANT]) [COMPANY] [1980] HCA 9; (1980) 144 CLR 253 [NAME]-[COMPANY] v [COMPANY] [1978] RPC 501 [NAME] v Collins [2008] HCA 49; (2008) 235 CLR 619 [COMPANY] v [NAME] [COMPANY] [2019] FCAFC 240; (2019) 154 IPR 215 [NAME] v [NAME] [2005] FCAFC 224; (2005) 225 ALR 416; (2005) 68 IPR 1 [NAME] v Queen's University at Kingston [2005] FCA 344; (2005) 216 ALR 41; (2005) 64 IPR 314 [COMPANY] v [COMPANY] [2008] FCAFC 9; (2008) 165 FCR 527 [COMPANY] v [COMPANY] (1990) 26 FCR 197 [COMPANY] v [NAME] [COMPANY] [1948] 1 [NAME] 308; (1948) 65 RPC 141 [NAME] [APPELLANT] [COMPANY] v [NAME] Co LLC [2008] FCAFC 82; (2008) 77 IPR 449 [COMPANY] v [COMPANY] (1989) 25 FCR 565; (1989) 13 IPR 513 Re [NAME]'s [NAME] [1907] 24 RPC 733 [COMPANY] v [COMPANY] (1992) 25 IPR 119; (1992) 111 ALR 205 [NAME] v [NAME] & [COMPANY] [2016] FCA 236; (2016) 118 IPR 421 [NAME] v [NAME] & [COMPANY] [2017] FCAFC 138; (2017) 348 ALR 156; (2017) 126 IPR 427 [COMPANY] v Moorhouse [1975] HCA 26; (1975) 133 CLR 1 [COMPANY] v [APPELLANT] ([NAME] [APPELLANT]) (No 2) [2013] FCA 395; (2013) 101 IPR 496 [COMPANY] v [APPELLANT] [NAME] [APPELLANT] (No 4) [2020] FCA 819 [COMPANY] v [APPELLANT] [NAME] [APPELLANT] (No 6) [2020] FCA 1866 [COMPANY] v [COMPANY] (1912) 29 RPC 245 [COMPANY] v [COMPANY] (No 2) [2018] FCAFC 26; (2018) 355 ALR 44; (2018) 129 IPR 205 [COMPANY] v [COMPANY] (No 2) [2011] FCA 848

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area: [NAME] and associated Statutes

Number of paragraphs: 672

Dates of hearing: 22–26, 29–31 March 2021 & 15–16 April 2021

[NAME]: [[NAME]] and [NAME]

[NAME]: [[NAME]]

Counsel for the First [NAME]/[NAME]-Claimant: [redacted]

[NAME] First [NAME]/[NAME]-Claimant: [redacted]

Counsel for the [NAME] [NAME]: [[NAME]]

[NAME] [NAME] [NAME]: [[NAME]]

[APPELLANT] 200 of 2019

BETWEEN: [COMPANY] 107 396 136 Applicant

AND: [COMPANY] ([NAME] [APPELLANT]) [NAME] 106 549 722 First [NAME]

[NAME] [NAME] [NAME]: [COMPANY] ([NAME] [APPELLANT]) [NAME] 106 549 722 [NAME]-Claimant

AND: [COMPANY] 107 396 136 [NAME]-[NAME]

order made by: [APPELLANT[NAME] OF ORDER: 8 March 2023

THE [APPELLANT] [[NAME]]:

1. The applicant bring in draft minutes of order reflecting the conclusions in these reasons and the parties will be heard as to the terms of the [APPELLANT]. Note: Entry of [APPELLANT] is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BESANKO J:

Introduction 1 [COMPANY] [COMPANY] ([NAME]) is the registered owner of two [NAME]. The first [NAME] is [NAME] No. 2005243110 and bears the title "Method, apparatus and [NAME] for [NAME] overstay detection" (the First [NAME]). The [NAME] [NAME] is [NAME] No. 2011204924 (the [NAME] [NAME]) and has the same title. The invention is for identifying the overstay of a vehicle in a [NAME] space and involves a battery-powered subterraneous [NAME] ([NAME]) to detect the presence of a vehicle in a [NAME] space, the storage of data in [[NAME]] apparatus and the wireless transmission of [[NAME]] data to a [NAME] ([NAME]) and the indication by [[NAME]] device to an [NAME] of identified instances of vehicle overstay in a [NAME] space. The [NAME] may be portable and may retrieve data from the [NAME] whilst the [NAME] is located in a moving vehicle. The wireless retrieval of data from the [NAME] may be performed in response to receipt of a wireless wake-up signal from a [NAME]. 2 In earlier periods of time, the [NAME] was referred to as a vehicle detection unit (VDU) or an in-ground unit ([NAME]). In earlier periods of time, the [NAME] was referred to as a drive-by [NAME] vehicle (DEV) or the in-vehicle unit (IVU) and may consist of a handheld unit (HHU) and a transient middle tier (TMT) which is a belt-worn device which communicates with the HHU by Bluetooth. 3 [NAME] has brought a proceeding in this Court against [APPELLANT] ([NAME] [APPELLANT]) ([NAME]) and the [NAME] ([NAME]) for relief in relation to alleged infringements of the [NAME]. 4 The claim by [NAME] against [NAME] is [[NAME]] it has directly and indirectly infringed claims in the First [NAME] and claims in the [NAME] [NAME] by its conduct in connection with vehicle detection sensors, [COMPANY] known as [NAME]. There are three versions of [NAME]'s [NAME], [NAME] and [NAME]. The First [NAME] and First [NAME] was made, sold, used and kept by [NAME] and the [NAME] of authorisation by [NAME] to [NAME] to use, between approximately October 2007 and December 2016 ([NAME] 1). Between approximately January 2016 and December 2016, [NAME] 1 was progressively upgraded to the [NAME] and [NAME]. 5 The [NAME] [NAME] and [NAME] [NAME] was made, sold, used and kept by [NAME] and the [NAME] of authorisation by [NAME] to [NAME] to use, between approximately November 2014 and December 2016 ([NAME] 2). Between approximately November and December 2016, [NAME] 2 was progressively upgraded to the [NAME] and [NAME]. 6 The [NAME] and [NAME] was made, sold, used and kept by [NAME] and the [NAME] of authorisation by [NAME] to [NAME] to use from approximately December 2014 ([NAME] 3). 7 [NAME] seeks declarations, injunctions, [APPELLANT] for delivery up, damages or an account of profits and additional damages under s 122(1A) of the [NAME] Act 1990 (Cth) (the Act) against [NAME]. 8 The relief which [NAME] seeks against [NAME] is similar, although the relief is based on claims of direct infringement by [NAME]. 9 On 6 April 2020, the Court made the following [APPELLANT] in this proceeding:

1. Pursuant to r 30.01 of the Federal Court Rules 2011 (Cth), the quantum of any pecuniary relief be heard and determined separately from, and after, the determination of all issues of liability for infringement and [NAME] validity.

2. For the avoidance of doubt: (a) the issues of liability for infringement include all questions of liability for authorisation of any infringement, of liability for additional damages and any question of innocent infringement under s 123 of the [NAME] Act 1990 (Cth); (b) the issues of quantum include the quantum of any additional damages and the allegations of double-recovery [[NAME]] are pleaded in paragraphs 10(b) and 11(b) of the First [NAME]'s Defence filed 28 February 2020 and paragraphs 18(d) and 19(e) of the [NAME] [NAME]'s Defence filed 28 February 2020. 10 With respect to paragraph 2(a) of the [APPELLANT], the following matters should be noted. The authorisation of infringements are actionable by reason of s 13 of the Act and [NAME]'s case is [[NAME]] has authorised [NAME] to use the [NAME] and the [NAME] and [[NAME]] has, in [APPELLANT], authorised other persons to use the [NAME] and the [NAME] in one or more methods for identifying overstay of a vehicle in a [NAME] space. As I have said, the claim for additional damages is made under s 122(1A) of the Act and is made against both respondents and under the [APPELLANT], the Court is to determine liability for additional damages at this stage, but the quantum thereof (assuming liability for additional damages is established) is to be determined at a later stage. With respect to innocent infringement under s 123 of the Act, [[NAME]] is a basis upon which a Court may refuse relief by way of damages or an account of profits. The defence was raised by [NAME] in its Amended Defence, but it was not pursued by [NAME] in closing submissions and need not be considered any further. 11 With respect to paragraph 2(b) of the [APPELLANT], the following matters should be noted. The allegations of double recovery are made by both [NAME] and [NAME]. The allegations are based on a Deed of Release dated 18 June 2014. [NAME] alleges in its [[NAME]] in relation to the [NAME] and [NAME], [NAME] has already been compensated under the Deed of Release for loss and damage alleged to arise from the supply or use of the [NAME] and [NAME] which were sold or supplied by [NAME] prior to 9 May 2013, "including in respect of allegations arising from the use of those [NAME] and [NAME] after [[NAME]] date". [NAME] advances a similar plea in response to the alleged infringement of [NAME]. [NAME] advances equivalent pleas in its Amended Defence. The issue of double recovery is, like the quantum of additional damages (assuming liability for additional damages is established), to be determined at a later stage. 12 [NAME] has filed a Notice of [NAME]-Claim in which it seeks [APPELLANT] from the Court under s 138(3) of the Act revoking the First [NAME] and the [NAME] [NAME]. [NAME] did not press in its closing submissions all of its pleaded grounds of invalidity. 13 The infringement issues of which there were four include issues of construction. 14 The first issue raises the meaning of "wake-up signal" in certain claims in the [NAME] and whether [NAME] 1 and [NAME] 2 used a wake-up signal. 15 The [NAME] issue raises the construction of certain claims in the First [NAME] and whether the claims include a method or [NAME] where the determination of vehicle overstay is made by the [NAME] instead of the [NAME], it being accepted [[NAME]] in the case of [NAME] 3, all capability of determining vehicle overstay in the [NAME] has been removed and vehicle overstay is determined by the [NAME]. 16 The third issue raises a question as to the infringing acts for which [NAME] is liable because it has authorised those acts, or because it is a joint tortfeasor in relation to these acts. It is also necessary to consider in this context the construction of the Deed of Release dated 18 June 2014. 17 The final issue is whether [NAME] and [NAME] are liable for additional damages under s 122(1A) of the Act. 18 The grounds of invalidity which were pursued by [NAME] in its closing submissions are as follows: (1) In relation to both [NAME], a failure to describe in the complete specification the best method known to [NAME] of performing the invention (s 40(2)(a)); (2) In relation to both [NAME], a failure by [NAME] to describe the invention fully (s 40(2)(a)); (3) In relation to both [NAME], a claim [[NAME]] [NAME] was not [NAME], or the sole [NAME], of the invention and did not derive title from [NAME] under s 15 of the Act and is not entitled to the First [NAME] or the [NAME] [NAME] and it is just and equitable [[NAME]] the [NAME] be revoked under s 138(3) of the Act; (4) In relation to both [NAME], and in respect of those claims [[NAME]] do not involve the use of wake-up signals (i.e., claims 1 and 6–10 (to the extent they depend on claim 1) and 30–32 of the First [NAME] and claims 1–25 and 27–29 of the [NAME] [NAME]), the claims are not fairly based on the matter described in the specification (s 40(3)); (5) In relation to both [NAME], the "invention" lacks an inventive step having regard to common general knowledge as it existed in the [NAME] area before the earliest priority date of the claims (s 18(1)(b)(ii)). In relation to this ground, [NAME] relies only on common general knowledge and does not rely on any [NAME] of the kind identified in s 7(3) of the Act; (6) In relation to the First [NAME] and if, contrary to earlier contentions made by [NAME], claims 21–23 and 28–32 encompass a [NAME] in which the [NAME] determines vehicle overstay, then the First [NAME], or at least those claims in the First [NAME], should be revoked because: (a) the [NAME] or those claims were obtained by false suggestion or misrepresentation (s 138(3)(d)); and (b) they lack clarity and therefore do not comply with s 40(3); and (c) they lack definition and therefore do not comply with s 40(2)(b). 19 [NAME] adopted [NAME]'s submissions in relation to infringement and invalidity. [NAME] confined its closing submissions (written and oral) to the reasons it contends an award of additional damages should not be made against it. 20 The relevant version of the Act and Regulations for the purpose of this proceeding is [[NAME]] in force prior to the amendments made to the Act by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act) and the Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013 (No 1) (Cth).

The First [NAME] 21 The complete specification of the First [NAME] was published and became open for public inspection on 24 November 2005. The application for the First [NAME] was made on 9 May 2005 and the [NAME] was sealed on 13 March 2008. The priority date for the claims in the First [NAME] is 17 May 2004. [NAME] named in the First [NAME] is [NAME] [NAME]. 22 The First [NAME] identifies the field of the invention as relating to [NAME] violations and, more particularly, to the detection of vehicles [[NAME]] overstay a defined time interval in [NAME] spaces. 23 In the section in the specification entitled "Background", the traditional methods of detecting vehicles [[NAME]] have exceeded the time limit of a [NAME] space are described. A traditional method of placing a chalk mark on the tyre of a vehicle in a [NAME] space and then returning at a later time to check if any of the vehicles with "chalked" tyres are still parked is described. The inefficiencies and disadvantages said to be associated with [[NAME]] method are identified and then a statement is made [[NAME]] a need thus exists for a method, an apparatus and a [NAME] [[NAME]] overcomes, or at least ameliorates, one or more of the described disadvantages. 24 In the "Summary" section in the specification, three aspects of the invention are described. Those descriptions of aspects of the invention correspond with claims 1, 11 and 21 respectively. 25 The first aspect is the provision of a method performed by a [NAME] for identifying overstay of a vehicle in a [NAME] space. The method comprises the steps of detecting the presence of a vehicle in the [NAME] space, processing and storing data relating to the presence of the vehicle in the [NAME] space, determining whether the vehicle has overstayed a defined duration in the [NAME] space, and wirelessly transmitting data relating to identified instances of overstay of the vehicle in the [NAME] space. 26 The [NAME] aspect is the provision of a battery-powered apparatus for subterraneous installation for identifying overstay of a vehicle in a [NAME] space. The apparatus comprises a detector adapted to detect the presence of a vehicle in the [NAME] space, a processor coupled to the detector for processing and storing data received from the detector, and determining whether the vehicle has overstayed a defined duration in the [NAME] space, a radio receiver coupled to the processor for receiving wake-up signals, and a radio transmitter coupled to the processor for transmitting data relating to identified instances of overstay of the vehicle in the [NAME] space. 27 The third aspect is the provision of a [NAME] for identifying overstay of vehicles in [NAME] spaces. The [NAME] comprises a plurality of battery-powered [NAME] for identifying overstay of vehicles in respective [NAME] spaces when subterraneously installed, and a [NAME] for wirelessly retrieving data from the plurality of battery-powered detecting apparatuses. The [NAME] comprises a radio transmitter for transmitting wake-up signals to ones of the plurality of battery-powered [NAME], a radio receiver for receiving data from woken-up ones of the plurality of battery-powered [NAME], a memory unit for storing data and instructions to be performed by a processing unit, and a processing unit coupled to the radio transmitter, the radio receiver and the memory unit. The processing unit is programmed to process data received via the radio receiver and to indicate instances of vehicle overstay to an [NAME]. The data relates to identified instances of vehicle overstay in the respective [NAME] space. 28 The specification then contains the following passages (on p 3) which were the [NAME] of expert evidence and of submissions by the parties: Repeated wireless wake-up of a [NAME] is typically performed irregularly with respect to time depending on the presence of a data collection device. Wireless retrieval of data may be performed in response to wireless wake-up of a [NAME]. Overstay of a vehicle in a [NAME] space may be determined at the [NAME] by processing data received from the detector. The [NAME] may be portable and may retrieve the data from the [NAME] whilst the [NAME] is located in a moving vehicle. Data relating to presence of a vehicle may comprise presence duration of the vehicle in the [NAME] space, movements of the vehicle in and out of the [NAME] space with corresponding time-[NAME] [NAME], and/or an indication of overstay of the vehicle in the [NAME] space. Vehicle presence detection may be performed by a magnetometer [[NAME]] detects changes in the earth's magnetic field caused by presence or absence of a vehicle in the [NAME] space. The [NAME] may be encased in a self-contained, sealed housing for subterraneous installation in a [NAME] space. The radio transmitter and/or radio receiver may operate in the ultra-high frequency (UHF) band and may jointly be practised as a transceiver. 29 The specification contains nine drawings, diagrams or figures which are described in the specification. 30 The body of the specification states [[NAME]] a "small number of embodiments are described hereinafter, by way of example only, with reference to the accompanying drawings" and contains the following brief description of the drawings, diagrams or figures: Fig. 1 is a flow diagram of a method for identifying overstay of a vehicle in a [NAME] space; Fig. 2 is a block diagram of a [NAME] for monitoring presence of a vehicle in a [NAME] space; Fig. 3 is a block diagram of a [NAME] for retrieving data from one or more detection apparatuses; Fig. 4 is block diagram of another [NAME] for retrieving data from one or more detection apparatuses; Fig. 5 is a schematic diagram of a [NAME] for identifying overstay of vehicles in [NAME] spaces; Fig. 6 is a schematic diagram of another [NAME] for identifying overstay of vehicles in [NAME] spaces; Fig. 7 is a schematic diagram of a further [NAME] for identifying overstay of vehicles in [NAME] spaces; Fig. 8 is a flow diagram of a method of operating a [NAME] according to an embodiment of the present invention; and Fig. 9 is a flow diagram of a method of operating a collection apparatus according to an embodiment of the present invention. 31 Figures 1, 2, 4, 5, 6, 8 and 9 are as follows: 32 A detailed description of the methods, apparatuses and [COMPANY] largely by reference to the figures, extends over approximately 10 pages in the specification. In light of the issues between the parties, it is necessary to set out the following passages: In relation to Figure 1 Page 4 Fig. 1 is a flow diagram of a method for identifying overstay of a vehicle in a [NAME] space. Presence of a vehicle in the [NAME] space is detected using a [NAME] in step 110. Data relating to presence of the vehicle is processed and stored in the [NAME] at step 120. The [NAME] is wirelessly woken-up at step 130 and at least a portion of the data is retrieved from the [NAME] at step 140. Overstay of the vehicle in the [NAME] space is indicated based on the retrieved data at step 150. In relation to Figure 2 Fig. 2 is a block diagram of an [NAME] for monitoring presence of a vehicle in a [NAME] space. …. Page 5 The radio receiver 240 and radio transmitter 250 are practised as a 433 MHz ultra-high frequency (UHF) radio transceiver for transmitting and receiving radio signals to and from a [NAME], respectively. Various UHF transceivers may be practised such as the [NAME] [NAME] transceiver, which requires to be turned on for approximately 1ms before [NAME] energy can be detected. However, [NAME] would readily understand [[NAME]] other types of transmitters, receivers or transceivers may be practised such as low frequency (LF) transceivers. Other UHF frequencies may also be practised such as in frequency bands commonly used for low powered devices, including 868 MHz, 915 MHz and 2.4 GHz. The battery 260 comprises a lithium manganese dioxide (LiMnO2) battery, which may be capable of providing the [NAME] with 5 to 10 years of continuous operation. Again, [NAME] would readily understand [[NAME]] various other battery types may be practised in place of a LiMnO2 battery. Page 6 The [NAME] generally operates in a low-power mode while detecting vehicle movements and presence in a corresponding [NAME] space, which may be practised on a continuous or periodic (e.g., interrupt driven) basis to conserve battery life. Although the radio receiver 240 of the [NAME] consumes a small amount of power (relative to other radio receivers), the radio receiver 240 is only turned on for the shortest possible time duration at regular intervals to detect the presence of a [NAME]. At other times, the radio receiver 240 is turned off to conserve battery life. … In one embodiment, the [NAME] determines and maintains three [NAME] types of [NAME]: • Current Status The current status of the [NAME] space in terms of vehicle presence (i.e., present or not present) and the amount of time the space has remained in the present state. • Historical Vehicle Movements Page 7 A record of each vehicle movement in the [NAME] space including the date and time of the movement. • Overstay Situation Detected when a vehicle remains in said [NAME] space for a duration longer than a defined time interval. The [NAME] may optionally be programmed with [NAME] relating to the hours of operation and [NAME] time limits [[NAME]] apply to an associated [NAME] space based on the time of day and day of week. Decisions concerning overstay can thus be made by the [NAME] based on different time limits [[NAME]] may apply to the [NAME] space at different times. [NAME] may also be downloaded to the [NAME] using a radio receiver in the [NAME]. The same radio receiver as used for receiving wake-up signals or a separate radio receiver may be used for this purpose. The downloaded [NAME] may comprise, but is not [COMPANY] to: • application firmware for the [NAME], • a table of operating hours and time limits (time of day and day of week) applicable to an associated [NAME] space, • operating parameters for the [NAME], and • [NAME] for updating or synchronising the real-time clock with a more accurate real-time source. Alternatively, decisions relating to vehicle overstay can be made by a [NAME] [[NAME]] collects data from the [NAME] via a radio communication link rather than by the [NAME]. … In relation to Figure 4 Page 9 A [NAME] transmits a wake-up signal (e.g., [NAME] followed by a defined message) and listens for valid responses from detection apparatuses. If no response is received from a [NAME], the [NAME] repeatedly transmits the wake-up signal. … In relation to Figure 6 Page 10 Fig. 6 is a schematic diagram of another [NAME] for identifying overstay of vehicles in [NAME] spaces. Fig. 6 shows detection apparatuses 612, 622, … 662 installed in [NAME] spaces 610, 620, …, 660, respectively. Vehicles 624 and 644 are parked in [NAME] spaces 620 and 640, respectively. Detection apparatuses 622 and 642 are shown in radio communication with a data collection device 680 by means of jagged lines 672 and 674, respectively. The data collection device 680 may be of fixed location remote from the [NAME] spaces 610 620, …, 660 or may comprise a hand-held portable apparatus carried by a pedestrian [NAME] officer. … In relation to Figure 8 Page 11 Fig. 8 is a flow diagram of a method of operating a [NAME] such the [NAME] in Fig.

2. A cycle of operation begins at step 810. After a wait period of duration t1 at step 820, the radio receiver is turned on at step 830. After a further wait period of duration t2 at step 840, for the radio receiver to stabilise, the received radio frequency signal strength (RSSI) is measured at step 850. At step 860, a determination is made whether the signal strength of a detected [NAME] is larger than a defined threshold. If an [NAME] of sufficient signal strength is detected (Y), a determination is made at step 870 whether the [NAME] relates to a [NAME]. If a [NAME] is detected (Y), a communications session between the detector apparatus and the [NAME] occurs at step 880. Such a session typically involves transmission and reception by both the detector apparatus and the [NAME]. The radio receiver and transmitter are turned off at step 890 and a new operation cycle begins at step 810. If an [NAME] of sufficient signal strength is not detected (N), at step 860, the radio receiver is turned off at step 890 and a new operation cycle begins at step 810. If a [NAME] is not detected (N), at step 870, the radio receiver is turned off at step 890 and a new operation cycle begins at step 810. The duration t2 is determined according to the type of radio receiver used and is typically of the order of 1 millisecond. Setting the duration t1 to 250 milliseconds implies an on:off duty cycle of 1:250. A typical low-power receiver may consume 5 to 10mA in receiver mode and the average power consumption of the [NAME] detection process is thus 20 to 40 µA. 33 Again, in light of the issues between the parties, it is necessary to set out the following claims in the First [NAME]:

1. A method performed by a subterraneous [NAME] for identifying overstay of a vehicle in a [NAME] space, said method comprising the steps of: detecting presence of a vehicle in said [NAME] space; processing and storing data relating to presence of said vehicle in said [NAME] space; determining whether said vehicle has overstayed a defined time duration in said [NAME] space; and wirelessly transmitting data relating to identified instances of overstay of said vehicle in said [NAME] space.

2. The method of claim 1, wherein said step of wirelessly transmitting is performed in response to receipt of a wireless wake-up signal.

3. The method of claim 2, wherein wireless wake-up signals are received irregularly with respect to time. … 8. The method of claim 1 or claim 2, comprising the further step of determining an overstay duration of the vehicle in said [NAME] space and storing a record thereof. … 11. A battery-powered apparatus for subterraneous installation for identifying overstay of a vehicle in a [NAME] space, said apparatus comprising: a detector adapted to detect presence of a vehicle in the [NAME] space; a processor coupled to said detector, said processor adapted to process and store data received from said detector and to determine whether said vehicle has overstayed a defined time duration in said [NAME] space; a radio receiver coupled to said processor for receiving wake-up signals; and a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said [NAME] space. … 21. A [NAME] for identifying overstay of vehicles in [NAME] spaces, said [NAME] comprising: a plurality of battery-powered detection apparatuses for identifying overstay of vehicles in respective [NAME] spaces when subterraneously installed; and a [NAME] for wirelessly retrieving data from said plurality of battery-powered detection apparatuses, said [NAME] comprising: a radio transmitter for transmitting wake-up signals to ones of said plurality of battery-powered detection apparatuses; a radio receiver for receiving data from woken-up ones of said plurality of battery-powered detection apparatuses; a memory unit for storing data and instructions to be performed by a processing unit; and a processing unit coupled to said radio transmitter, said radio receiver and said memory unit; said processing unit programmed to process said data received via said radio receiver and to indicate incidences of vehicle overstay to an [NAME]; said data relates to identified instances of vehicle overstay in a respective [NAME] space.

22. The [NAME] of claim 21, wherein said data is received from one of said battery-powered detection apparatuses in response to receipt of a wake-up signal transmitted from said [NAME].

23. The [NAME] of claim 22, wherein said [NAME] is portable. … 28. The battery-powered apparatus of claim 11, wherein said radio receiver is only turned on to receive said wake-up signals for short durations to conserve power in said battery-powered [NAME].

29. The method claim 1, comprising the further step of selectively enabling receipt of said wake-up signal for short durations to conserve power in said subterraneous [NAME].

30. A method performed by a subterraneous [NAME] for identifying overstay of a vehicle in a [NAME] space, said method substantially as herein described with reference to an embodiment shown in the accompanying drawings.

31. A battery-powered apparatus for subterraneous installation for identifying overstay of a vehicle in a [NAME] space, said apparatus substantially as herein described with reference to an embodiment shown in the accompanying drawings.

32. A [NAME] for identifying overstay of vehicles in [NAME] spaces, said [NAME] substantially as herein described with reference to an embodiment shown in the accompanying drawings.

The [NAME] [NAME] 34 The complete specification for the [NAME] [NAME] was published and became open to the public for inspection on 11 August 2011. The application for the [NAME] was made on 21 July 2011 and the [NAME] was sealed on 4 February 2016. The priority date for the claims in the [NAME] [NAME] is (as with the claims in the First [NAME]) 17 May 2004. [NAME] named in the [NAME] [NAME] is [NAME] [NAME]. 35 The [NAME] [NAME] describes the invention in very similar terms to the description of the invention in the First [NAME]. The different consistory clauses in the [NAME] [NAME] reflect the different language of the claims. The nine drawings, diagrams or figures in the [NAME] [NAME] are identical to the nine drawings or figures in the First [NAME]. 36 Again, in light of the issues between the parties, it is necessary to set out the following claims in the [NAME] [NAME]:

1. A method for identifying vehicles [[NAME]] overstay a [NAME] time limit associated with a [NAME] space, said method comprising the steps of: detecting presence of a vehicle in said [NAME] 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 [NAME] space; determining from said stored data by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any [NAME] payment [NAME], whether said vehicle has overstayed said [NAME] time limit associated with said [NAME] space; detecting presence of a [NAME] within wireless communication range of said [NAME]; and when presence of said [NAME] 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 [NAME] time limit associated with said [NAME] space. … 10. A battery-powered apparatus for identifying vehicles [[NAME]] overstay a [NAME] time limit associated with a [NAME] space, said apparatus comprising: a detector adapted to detect presence of a vehicle in said [NAME] 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 [NAME] payment [NAME] whether said vehicle has overstayed a [NAME] time limit associated with said [NAME] space; a radio receiver coupled to said processor for receiving radio signals from a [NAME]; and a radio transmitter coupled to said processor for transmitting data relating to identified instances of said vehicles overstaying said [NAME] time limit associated with said [NAME] space; wherein said battery powered apparatus is encased in a self-contained, sealed housing. … 25. A method for identifying overstay of a vehicle in a [NAME] space, said method comprising the steps of: detecting presence of a vehicle in said [NAME] 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 [NAME] space; determining from said stored data by said battery-powered apparatus encased in a self-contained, sealed housing and independently of any [NAME] payment [NAME], whether said vehicle has overstayed a defined time duration in said [NAME] 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 [NAME] space.

26. An apparatus for identifying overstay of a vehicle in a [NAME] space, said apparatus comprising: a detector adapted to detect presence of a vehicle in the [NAME] 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 [NAME] payment [NAME] whether said vehicle has overstayed a defined time duration in said [NAME] space; a radio receiver coupled to said processor for receiving wake-up signals; and a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said [NAME] 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.

27. A method for identifying overstay of a vehicle in a [NAME] space, said method comprising the steps of: detecting presence of a vehicle in said [NAME] space using a battery-powered apparatus; processing and storing, in said battery-powered apparatus, data relating to presence of said vehicle in said [NAME] space; determining from said stored data by said battery-powered apparatus and independently of any [NAME] payment [NAME], whether said vehicle has overstayed a defined time duration in said [NAME] space; and wirelessly transmitting, from said battery-powered apparatus, data relating to an identified instance of overstay of said vehicle in said [NAME] space.

28. An apparatus for identifying overstay of a vehicle in a [NAME] space, said apparatus comprising: a detector adapted to detect presence of a vehicle in the [NAME] 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 [NAME] payment [NAME] whether said vehicle has overstayed a defined time duration in said [NAME] space; a radio transmitter coupled to said processor for transmitting data relating to identified instances of overstay of said vehicle in said [NAME] space; and a battery for providing power to said detector, processor, and radio transmitter;

The Decision of this Court in 2013 37 [NAME] was the registered owner of [NAME] No 2010101354 which bears the title "Method, apparatus and [NAME] for [NAME] overstay detection". The [NAME] was certified on 14 January 2011. The complete application for the [NAME] was filed on 2 December 2010 as a divisional application of [NAME] No. 2008200089 (the Parent Application). The Parent Application was filed on 8 January 2008 as a divisional application of the First [NAME]. The [NAME] expired on 9 May 2013. 38 [NAME] instituted a proceeding in this Court against [NAME] alleging [[NAME]] the supply of [NAME]'s VDU known as the [NAME] which was used in a method for detecting the overstay of a vehicle in a [NAME] space, infringed the claims in the [NAME]. [[NAME]] upheld the validity of the [NAME] and found [[NAME]] the claims had been infringed by [NAME] ([[NAME]] v [APPELLANT] ([NAME] [APPELLANT]) (No 2) [2013] FCA 395; (2013) 101 IPR 496 ([NAME] 2013)). 39 A construction issue resolved by the Court in [NAME] 2013 was whether the [NAME] had a radio receiver for receiving wake-up signals within claim 2 of the [NAME]. Claim 2 of the [NAME] and claim 26 of the [NAME] [NAME] are in identical terms. [[NAME]] described the [NAME] in detail. [[NAME]] found [[NAME]] it infringed claim 2 of the [NAME]. 40 As I have said, an issue arises in this proceeding as to the meaning of "wake-up signal" in claims in the First [NAME] and the [NAME] [NAME] and whether [NAME] 1 and [NAME] 2 wirelessly transmits data in response to receipt of a wireless wake-up signal. [NAME] filed a Reply in this proceeding in which it alleged [[NAME]] by reason of the findings in [NAME] 2013, an estoppel in relation to [[NAME]] issue arose against [NAME]. The plea of issue estoppel is no longer pressed by [NAME]. [NAME] now submits [[NAME]] the findings in [NAME] 2013 are highly persuasive. 41 The decision in [NAME] 2013 is relevant in another respect. In this proceeding, [NAME] contends [[NAME]] for the purposes of claims 1, 6–10 (insofar as they depend on claim 1) and 30–32 of the First [NAME] and claims 1–25 and 27–29 of the [NAME] [NAME], there is no real and reasonably clear disclosure of a [NAME]/apparatus/method in which the [NAME] communicates with the [NAME] without the aid of wake-up signals and, in those circumstances, those claims are not fairly based. [NAME] contends [[NAME]] a "materially identical argument" was put to this Court in [NAME] 2013 and rejected by the Court. 42 There was an appeal to the [[NAME]] of this Court against the [APPELLANT] made in [NAME] 2013 and the appeal was heard. However, the proceeding was resolved before judgment was delivered when [NAME] and [NAME] entered into the Deed of Release dated 18 June 2014.

The Infringement Issues 43 The infringement issues raise issues as to the proper construction of claims in the [NAME]. The principles of claim construction are well established and are not in dispute in this case. In the circumstances, it is sufficient to set out the statement of those principles by the [[NAME]] of this Court in [COMPANY] v [COMPANY] [2005] [NAME]; (2005) 222 ALR 155; (2005) 65 IPR 86 (at [67]): (i) the proper construction of a specification is a matter of law: [COMPANY] v [COMPANY] (1988) 13 IPR 385 at 400; (ii) a [NAME] specification should be given a purposive, not a purely literal, construction: [COMPANY] v [COMPANY] (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: [NAME] [APPELLANT] [COMPANY] v [NAME] [COMPANY] (2001) 207 CLR 1 at [24]; (iii) the words used in a specification are to be given the meaning which the normal person [NAME] in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: [COMPANY] at 391; (iv) while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of [NAME] as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: [NAME] v [NAME] at [15]; [NAME] & Co [COMPANY] v [NAME] (1961) 106 CLR 588 at 610; [NAME] v [COMPANY] (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one [NAME] matter into a claim for another and different [NAME] matter: [COMPANY] v [COMPANY] [1938] 56 RPC 23 at 39; (v) [NAME] can give evidence on the meaning which those [NAME] in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by [NAME] addressees to words which might otherwise bear their ordinary meaning: [COMPANY] v [COMPANY] (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and [NAME] at the time ([NAME] v [NAME] at [24]); and (vi) it is for the Court, not for any witness however expert, to construe the specification; [COMPANY], at 485–486.

Issue 1 44 The first issue raises the meaning of "wake-up signal" in certain claims in the [NAME] and whether [NAME] 1 and [NAME] 2 used a wake-up signal. 45 A wake-up signal is referred to in two contexts in the First [NAME]. First, it is referred to in the context of a step being performed in response to receipt of a wireless wake-up signal, [[NAME]] step being the wireless transmission of data relating to identified instances of overstay of a vehicle in a [NAME] space as in claim 2 of the First [NAME]. The [NAME] is as an integer of the [NAME] being a radio receiver coupled to the processor (previously identified) for receiving wake-up signals as in claim 11 in the First [NAME] and claim 26 in the [NAME] [NAME]. 46 [NAME] adduced evidence from [NAME] [NAME]. [NAME] [NAME] is an electrical [NAME]. He is the sole employee or consultant of a [COMPANY] [[NAME]] specialises in electronics design. He is a qualified electrical [NAME] who has specialised in working with sensing devices, RF (radio frequency) communications and communication devices concerned with the generation, transmission, processing, exchange and storage of data. He has had a long involvement as an independent expert witness in disputes between [NAME] and [NAME]. 47 [NAME] adduced evidence from [NAME] [NAME]. [NAME] [NAME] has an Associate Diploma of [NAME] (Manufacturing) and a Bachelor of [NAME] (Honours) in [NAME]. He sets out his work history in his affidavit at considerable length. It is not necessary for me to repeat it. I accept [[NAME]] he has specialised knowledge in the field of electronics and communications [NAME] technologies. 48 Each expert provided lengthy affidavits dealing with the issues of infringement and invalidity. They then participated in a conference of [NAME] in which they addressed a number of agreed questions. A joint [NAME]' report (JER) was prepared. The [NAME] then gave evidence in this proceeding in a joint session of evidence over a period of three days. There was no challenge to the expertise of either witness, although [NAME] made a general challenge to [NAME] [NAME] evidence which I will [NAME] later in these reasons. 49 The [NAME] were asked in the conference of [NAME] to identify any points of agreement or disagreement between them regarding their understanding of the term "wake-up signal" in the claims in the First [NAME] and the [NAME] [NAME] (being claims 2, 3, 4, 5, 11, 12, 13, 21, 22, 28 and 29 in the First [NAME] and claim 26 in the [NAME] [NAME]) in light of the specifications of the First [NAME] and the [NAME] [NAME] respectively. 50 In the JER, the [NAME] indicated [[NAME]] they agreed [[NAME]] the term "wake-up signal" is somewhat confusing in [[NAME]] the processor and receiver in the [NAME] are active in order to receive the wake-up signal. They agreed [[NAME]] rather, the wake-up signal acts as a keep awake signal to alert the [NAME] to the presence of the [NAME] within radio communications range and [[NAME]] when the wake-up signal is received, the [NAME] and the [NAME] engage in a communications session. 51 In addition to the joint observations, [NAME] [NAME] made the following observations. A wake-up signal within the meaning of the claims in the First [NAME] is a wireless radio signal [[NAME]] is transmitted by a transient [NAME] to notify a data [NAME] [[NAME]] it is within radio communications range. The effect of the wake-up signal is to halt the data [NAME]' power-saving operating cycle which involves the processor and transceiver being in various states of activity and inactivity, and to keep the processor and radio receiver in an active state, once the [NAME] is within range, in order to have a communications session with the [NAME]. 52 In addition to the joint observations, [NAME] [NAME] made the following observations. A wake-up signal initiates change in a [NAME]'s power state from a sleep state to a run or active state. In a sleep state, the device is in, or close to, hibernation. The device may "wake" to perform certain routine tasks, and return to sleep. In the case of both [NAME], the "wake-up signal" is not waking the device from a typical sleep state, but rather initiates a communications session between the [NAME] and the HHU (TMT and HHU). The [NAME] is already awake as it must be awake to receive and process messages from the HHU. The wake-up signal would have been better labelled as an "initiate communications request" or "HHU beacon", as it is not technically waking the [NAME] ([NAME]) up. 53 The [NAME] were also asked to [NAME] in the conference of [NAME] any points of agreement or disagreement between them regarding whether [NAME] 1 uses a wake-up signal as claimed in claims 2, 3, 4, 11, 12, 21, 22, 28 and 29 of the First [NAME] and claim 26 of the [NAME] [NAME]. 54 In the JER, the [NAME] indicated [[NAME]] they disagreed as to the signal which acts as the "wake-up signal" within the meaning of the claims in the First [NAME]. It followed [[NAME]] they disagreed as to which device is sending the wake-up signal. 55 [NAME] [[NAME]] expressed the opinion [[NAME]] the [REDACTED] informs the [[NAME]] the TMT is within radio communications range. The effect of receiving the [REDACTED] causes the processor and transceiver in the [NAME] to [REDACTED]. The [REDACTED] is synonymous with the wake-up signal in the First [NAME]. The use of a wake-up signal in the form of a [REDACTED]. 56 [NAME] [[NAME]] expressed the view [[NAME]] claim 2 of the First [NAME] discloses [[NAME]] the [NAME] will wirelessly transmit data in response to a wake-up signal sent by the [NAME]. The transfer of data is thus initiated by the [NAME] which sends the so-called "wake-up signal". [REDACTED] 57 It is convenient to note at this point [[NAME]] the notion of performing a communications session is identified in Fig 8 (at step 880) and in Fig 9 (at step 950). It should also be noted [[NAME]] in [NAME] 2013 (at [79]), [[NAME]] J considered the meaning of wake-up signals within claim 2 of the [NAME] and said [[NAME]] they are: signals [[NAME]] are sent wirelessly by a [NAME] to a [NAME] [[NAME]], upon receipt by the [NAME], activate it to engage in a communications session with the [NAME], in which the [NAME] wirelessly transmits data relating to identified instances of overstay of a vehicle in a [NAME] space. 58 [NAME] submits [[NAME]] the following matters are common ground between it and [NAME] as to the operation of [NAME]

1. First, [NAME] 1 has a battery-powered [NAME] [[NAME]] identifies overstay, by the use of a magnetic sensor, the readings of which are used to detect vehicle presence and which is coupled to a microprocessor in a module [[NAME]] includes, inter alia, a radio transceiver. [REDACTED]. 59 In [NAME] 2013, the Court set out the process in the case of the [NAME] which takes place when the [NAME] attempts to communicate with a TMT. [[NAME]]'s description was relied on by [NAME] in this case although, at the same time, I did not understand [NAME] to dispute the description contained in [NAME]'s outline of closing written submissions which is set out below (at [63]). The description of the process given by the Court in [NAME] 2013 (at [90]) is as follows: [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] 60 [REDACTED]. 61 In [NAME] 2013, the Court held [[NAME]]'s [NAME] possessed all of the essential features of claim 2 in the [NAME]. 62 [NAME] [NAME] [NAME] is the Director of Development at [NAME] and he is one of three main shareholders in the company, including as he put it, through entities controlled by him. He has approximately 37 years' experience in [NAME] development, "working primarily for [NAME] [NAME] developing and supplying off-the-shelf [COMPANY] and consulting to large corporate [NAME]". His work history includes leading [NAME]'s design team in developing the "[NAME]" vehicle detection and [NAME] management [NAME] from 2006 to 2012. [NAME] [NAME] gave evidence in this case as he had in [NAME] 2013. 63 [NAME] set out a description of the process in its outline of closing written submissions on infringement. [[NAME]] description is based on the evidence of [NAME] [[NAME]] and various documents. It is an accurate description of the process and, as I have said, I did not understand [NAME] to dispute [[NAME]] is the case. It is as follows: [REDACTED] [REDACTED] REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] [REDACTED] (Footnotes omitted.) 64 [NAME] submits in this case [[NAME]] while [NAME] provides additional evidence of the [NAME] contained in the [REDACTED] and how the communications session is established between the [NAME] and the [NAME] when there is a violation or pending violation, neither of those matters should lead to a different conclusion in this case from the conclusion reached by the Court in [NAME] 2013. [NAME] makes the point [[NAME]] the [NAME] provided in the [REDACTED] from the [NAME] was not identified with any precision in [NAME] 2013. In his evidence in re-examination in [NAME] 2013, [NAME] said [[NAME]] the key piece of [NAME] was the reason for connecting. He said [[NAME]] there was also other [NAME] about how much [NAME] event data has been collected, and other fields. He said: I don't recall all of them off the top of my head. 65 [NAME] [NAME] said he believed it was the [NAME] set out in the VDU functional specification. 66 In his evidence before this Court, [NAME] agreed [[NAME]] the [REDACTED]. He agreed [[NAME]] while some [NAME] was included in the [REDACTED]. 67 [NAME] [[NAME]] did not consider [[NAME]] the [REDACTED]. 68 [NAME] [[NAME]] expressed the opinion [[NAME]] [NAME]'s opinion was incorrect and [[NAME]] it was flawed by reason of his consideration of the Zigbee protocol. In response, [NAME] [NAME] said the following: This has nothing to do with the Zigbee protocol. [REDACTED] 69 [NAME] [NAME] was [NAME]-examined at some length about the extent to which he had relied on his knowledge of the Zigbee protocol in formulating his opinion. The Zigbee protocol is a global standard [[NAME]] relates to wireless networking and it relates to the products which have a similar functionality to [NAME]'s products. [NAME] [[NAME]] described the Zigbee protocol as a framework [[NAME]] specifically relates to the construction of mesh networks and low power devices and it is targeted towards a particular class of device. He agreed [[NAME]] a fair way to describe it was [[NAME]] it provides the "broad communications architecture". [NAME] [NAME] was taken through paragraphs in his affidavit which referred to the Zigbee protocol. He expressed a number of opinions in para 125 of his first affidavit based on his knowledge of the Zigbee protocol and two product specifications, specification 1.0 and specification 2.0. He was taken to [NAME] [NAME] evidence about the communications protocol actually adopted by [NAME]. He was asked to assume [[NAME]] [NAME]'s evidence is correct. He was also taken to the Verified Product and Method Description verified on 24 April 2020 (VPMD). He agreed [[NAME]] some of the opinions he expressed were incorrect on the assumption [[NAME]] [NAME]'s description of how the process worked was correct. For example, he gave the following evidence: [NAME]: So [[NAME]] lays to rest, does it not, the evidence you give about what might be a logical design choice in 127. It's simply not a feature of the version 1 [NAME] product. [NAME]: Yes. It's – the logic aspect of it has to do with needlessly sending additional data. But [[NAME]]'s – [[NAME]]'s a logical perspective based on how I would design a [NAME]. If [NAME] [NAME] evidence says it's done otherwise, then it's done otherwise. 70 The criticism of [NAME] [NAME] approach went further than this and I deal with the additional criticisms of [NAME] [[NAME]] approach below. [NAME] submits [[NAME]]'s criticism of [NAME] [[NAME]] in terms of his reliance on the Zigbee protocol and the functional specifications "goes nowhere" because [NAME] [NAME] has based his opinions, or has also based his opinions, on more fundamental considerations. 71 [NAME] submits [[NAME]] the [REDACTED]. [NAME] submits [[NAME]] I should reach the same conclusions as the Court did in [NAME] 2013. 72 As I have already said, the Court in [NAME] 2013 noted [[NAME]] [REDACTED] [REDACTED]. [[NAME]] then noted [[NAME]] the evidence before the Court was unclear as to precisely what part of the overstay [NAME] was included in the [REDACTED] [REDACTED] 74 The key point put by [NAME] in response to [NAME]'s submissions was expressed by it in various ways. It submits [[NAME]] it is the [REDACTED] containing the connection [NAME] which initiates the communications between the [NAME] and the [NAME]. It submits [[NAME]] the [NAME] initiates communications with the [NAME]. It submits [[NAME]] the [REDACTED] is in and of itself a communication [[NAME]] contains useful data, including overstay [NAME] and it is the initial transmission in the sequence of transmissions and responses. [NAME] submits [[NAME]] the [NAME] and the [NAME] have already engaged in a communications session before the [NAME] sends its response. 75 [NAME] submits [[NAME]] the decision in [NAME] 2013 should not be followed because the Court in [[NAME]] case did not have the benefit of [NAME] [[NAME]] evidence about the connection [NAME] contained in the [REDACTED] and details of how the communications session is established between the [NAME] and the [NAME] and details of how the [NAME] 1 departed from the [REDACTED]. [NAME] submits [[NAME]] a proper understanding of these matters is essential to the correct conclusion [[NAME]] the [NAME] 1 did not use a wake-up signal as claimed. [NAME] refers to Fig 8 and the significance of performing a communications session and submits [[NAME]] the crucial point is, in effect, which of the two devices initiates the communications session. [NAME] submits [[NAME]] is the [REDACTED] containing the connection [NAME] which initiates the communications session. 76 [NAME] submits [[NAME]] the wake-up scheme of the invention as revealed in the claims is [[NAME]] it is the [NAME] which initiates the communications session and [[NAME]] is not the case with the [NAME] 1. [NAME] refers to the significance of the communications session to the decision in [NAME] 2013. It submits [[NAME]] this Court has fresh evidence from [NAME] [[NAME]] and, furthermore, [[NAME]] the opinions of [NAME] [[NAME]] have been shown to be flawed. 77 In my opinion, the essence of the Court's reasoning in [NAME] 2013 applies having regard to the evidence advanced in this case and, with respect, [[NAME]] reasoning is correct. The notion of which device initiates the communications session was a matter raised before the Court in [NAME] 2013. For example, in paras 45 and 46 in confidential exhibit STO1 referred to in the affidavit of [NAME] [NAME] affirmed on 22 December 2011, the following appears: 45 In [13(c)] [NAME] [NAME] also states: [REDACTED]; 46 This is also incorrect. The VDU [REDACTED]. 78 In my opinion, as [NAME] submits, reference to "initial communication" or "initiating the communications session" is irrelevant because neither of those matters is referred to in the claims and it is not the communications session [[NAME]] is the [NAME] of the claims. The communications session which is the [NAME] of the claims is [[NAME]] which follows the wake-up signal. Furthermore, data related to identified instances of overstay of a vehicle, in [[NAME]] magnetic data is undoubtedly data [[NAME]] relates to identified instances of overstay of the vehicle, is transmitted in response to receipt of a wireless wake-up signal. 79 In my opinion, the [NAME] 1 (and the [NAME] 2) infringes claims 2, 3, 4, 5, 11, 12, 13, 21, 22, 28 and 29 of the First [NAME] and claim 26 of the [NAME] [NAME] and the contention by [[NAME]] [NAME] 1 does not involve the use of a wake-up signal or provide for data to be transmitted when a [NAME] is detected, should be rejected. 80 [NAME] raised a separate point which appears to be correct and [[NAME]] is [[NAME]] [NAME] 1 and [NAME] 2 do not infringe claim 8 in the First [NAME] because the [NAME] does not involve the further step of determining an overstay duration of the vehicle in the said [NAME] space (emphasis added). 81 Before leaving this section of the reasons, I will [NAME] by way of a summary a submission made by [[NAME]] seems to bear upon [NAME] [[NAME]] approach to giving evidence in relation to this issue and, as I would apprehend it, other issues in the case. [NAME] submits [[NAME]] [NAME] speculated on the basis [[NAME]] had used the Zigbee protocol in circumstances where he knew when he made his affidavit [[NAME]] [NAME] had given evidence in 2011 [[NAME]]'s [NAME] only utilised a subset of the Zigbee protocol. Furthermore, [NAME] submits [[NAME]] [NAME]'s evidence did not reflect the VPMD or [NAME] [NAME] 2011 evidence, both of which [NAME] [NAME] had to hand when he made his affidavit. [NAME] submits [[NAME]] [NAME] was aware from [NAME] [[NAME]] 2011 evidence [[NAME]] the [NAME] functional specifications did not accurately describe [NAME]

1. The submission seemed to be [[NAME]] [NAME] proceeded on a basis he knew to be incorrect. I reject [[NAME]] submission. 82 [NAME] referred to the fact [[NAME]] in [NAME]'s first affidavit in this proceeding, he said [[NAME]] he was provided with, and had read, affidavits sworn in the [NAME] 2013 proceedings. One of those affidavits was an affidavit of [NAME] [NAME] himself sworn on 27 February 2012 in which he said: Zigbee standard 22. In paragraphs 31 to 33 of Confidential Exhibit ST02, [NAME] states [[NAME]] I may have assumed [[NAME]] [REDACTED] 83 Counsel for [NAME] took me through the history of the matter. He started with a redacted document dated 22 December 2009 and a [NAME] redacted document dated on various dates in 2009 (VDU Technical Specification). Counsel submits [[NAME]] was all [NAME] had at the beginning of 2020. [NAME] was then given an unverified VPMD and then a verified VPMD which contained marked up a number of additions. [NAME] asked to look at the underlying documents and received the various functional specifications and specifications set out in a table in para 100 of [NAME] [COUNSEL] first affidavit. 84 Counsel took me to para 115 and following of [NAME] [COUNSEL] affidavit where he sets out his instructions which were to consider the function and specifications of 1.0 to 3.1 and to describe the process by which the [NAME] and the TMT establish a communications session. [NAME] [[NAME]] was asked to assume [[NAME]] the documents relate to the [NAME]

1. There are a number of references to the Zigbee protocol in the documents. [NAME] prepared a 24 page document which, among other things, linked paragraphs in [NAME] [NAME] affidavit with paragraphs in the Sentinel Functional specifications. I do not propose to go through this document in detail. It is sufficient [[NAME]] I do not consider [[NAME]] [NAME] prepared his evidence on a basis which he knew to be wrong (see transcript pp 758–761, 779–781).

Issue 2 85 The [NAME] issue raises the construction of certain claims in the First [NAME] and whether the claims include a method or [NAME] where the determination of vehicle overstay is made by the [NAME] instead of the [NAME]. 86 It is agreed between the [NAME] [[NAME]] in the case of [NAME] 3, all capability of determining overstay in the [NAME] has been removed. Vehicle overstay is determined by the HHU. The issue is whether, on the correct construction of claims 21–23 and 28–32 of the First [NAME], either the [NAME] or the [NAME] can make the determination [[NAME]] a vehicle has overstayed. [NAME]'s case is [[NAME]] on the correct construction of those claims, either the [NAME] or the [NAME] can make the determination [[NAME]] a vehicle has overstayed. [NAME]'s case is [[NAME]] those claims are restricted to [COMPANY] or methods in which the [NAME], and only the [NAME], makes the determination [[NAME]] a vehicle has overstayed. 87 In the [NAME], the [NAME] addressed this issue as an issue involving proper construction of the claims and an issue as to whether [NAME] 3 fell within the terms of the claims as so construed. As there is no dispute about how the [NAME] 3 operates in this respect, the issue is, in essence, one of construction. 88 With respect to the construction of the claims, the [NAME] were asked to identify any points of agreement or disagreement between them regarding their understanding of which component(s) of the [NAME] or method claimed are responsible for determining overstay of vehicles in [NAME] spaces within claims 21–23 and 28–32 of the First [NAME]. 89 The [NAME] agreed [[NAME]] the [NAME] as disclosed in the First [NAME] is capable of determining overstay in the [NAME]. However, they disagree as to whether claims 21–23 and 28–32 of the First [NAME] indicate [[NAME]] the [NAME] performs the overstay determination. 90 In addition to the joint observations, [NAME] [[NAME]] made the following observations. He said [[NAME]] in order to determine overstay, the [NAME] needs to have the following [NAME]: (1) the arrival time of the vehicle; (2) the identification of the [NAME] space; (3) the [NAME] time rules associated with [[NAME]] [NAME] space; and (4) the current time. The First [NAME] discloses a [NAME] [[NAME]] has all of the means necessary for determining overstay within the apparatus. The First [NAME] also discloses a [NAME] where the [NAME] is operated in a reduced capacity [[NAME]] transmits a subset of the necessary [NAME] to the [NAME] and the [NAME] is used to determine overstay of the vehicle as part of the [NAME]. In this context, [NAME] [NAME] referred to p 7 lines 21–23 of the First [NAME], which is set out above, but which I repeat here for convenience: Alternatively, decisions relating to vehicle overstay can be made by a [NAME] [[NAME]] collects data from the [NAME] via a radio communication link rather than by the [NAME]. 91 In addition to the joint observations, [NAME] [[NAME]] made the following observations. He said [[NAME]] claim 21 of the First [NAME] states [[NAME]] the vehicle detector (i.e., the [NAME]) determines overstay. The passage on p 7 lines 21–23 of the First [NAME] states [[NAME]] decisions relating to overstay can be made by a HHU. The meaning which [NAME] [[NAME]] gives to this passage is [[NAME]] overstay is still determined in the [NAME] ([NAME]), but decisions relating to the [NAME] can be made in the [NAME] or HHU. [NAME]'s opinion is [[NAME]] the [NAME] could theoretically support the determination of overstay outside the [NAME], but the First [NAME] clearly states [[NAME]] the [NAME] determines overstay. [NAME] [[NAME]] expresses the opinion [[NAME]] "considerable thought" is required in order to decide how overstay could be determined in the [NAME] or HHU and the First [NAME] is silent on [[NAME]] matter. 92 The [NAME] were also asked to [NAME] in the [NAME] any points of agreement or disagreement between them regarding their understanding of Figs 1 to 9 of the First [NAME], including by reference to the description of those figures in the specification. 93 The [NAME] agreed [[NAME]], in the case of Fig 1, the [NAME] indicates overstay based on retrieved data stored in the [NAME]. However, they disagree as to whether the retrieved data already contains a determination of overstay made by the [NAME]. They agree on the meaning and description of the other figures. 94 In addition to the joint observations, [NAME] [NAME] made the following observations. Fig 1 is a general [NAME] overview of overstay determination and the figure discloses [[NAME]] at least the vehicle presence data is stored in the [NAME] and later retrieved by the [NAME]. The figure allows for an overstay determination to be made by either the [NAME] or the [NAME]. 95 In addition to the joint observations, [NAME] [NAME] made the following observations. In the case of the method shown in Fig 1, overstay is determined by the [NAME] and this [NAME] is then retrieved by the [NAME] and indicated on the HHU based on the retrieved data ([NAME] [NAME] emphasis). There is no reference in the figure to other data sources and [NAME] states [[NAME]] he can only infer [[NAME]] all data relating to overstay is retrieved from the [NAME]. [NAME] [[NAME]] expresses the opinion [[NAME]] the word "indicated" means to "pass through [NAME]" and display it to a user. There is no mention of further processing or calculation with respect to the data, which [NAME] [NAME] believes would have been described in the First [NAME] if [[NAME]] was a feature of the [NAME]. 96 The [NAME] were asked to identify in the [NAME] any points of agreement or disagreement between them as to whether the [NAME] 3 is, in substance, the same as, or different to, the embodiments shown in Figs 1, 2, 4, 5, 6, 8 and 9 in the First [NAME]. They agreed in regards to the embodiments in Figs 2, 4, 5, 6, 8 and 9 in the First [NAME], [[NAME]] the [NAME] 3 is substantially the same as the [NAME] in the First [NAME]. They disagree [[NAME]] [NAME] 3 in regards to the embodiment shown in Fig 1 in the First [NAME] is substantially the same as the [NAME] of the First [NAME]. 97 In addition to the joint observations, [NAME] [NAME] made the following observations. [NAME] 3 is the same in substance as the [NAME] of the First [NAME] operating in the configuration where the [NAME] determines overstay. [NAME] [NAME] refers to and relies upon his comments with respect to the construction of claims 21–23 and 28–32 of the First [NAME] (see [90] above). [NAME] agrees [[NAME]] the [NAME] in the [NAME] 3 cannot determine overstay. 98 In addition to the joint observations, [NAME] [NAME] made the following observations. Step 150 in Fig 1 reads as overstay indicated based on the retrieved data from the [NAME] ([NAME]). There is no reference to retrieving data from anywhere else so the retrieved data must therefore include overstay [NAME]. It follows, according to [NAME], [[NAME]] 1 does not match in substance the [NAME] 3. 99 Finally, the [NAME] were asked to identify in the [NAME] any points of agreement or disagreement between them with respect to the related question of whether [NAME] 3 has all of the features of the [NAME] claimed in claim 21 of the First [NAME]. The [NAME] referred to their previous comments. In addition, they noted [[NAME]] they agree [[NAME]] the [NAME] as disclosed in the First [NAME] is capable of determining overstay in the [NAME]. However, they disagree as to whether claim 21 of the First [NAME] discloses [[NAME]] the [NAME] performs the overstay determination. 100 Before turning to consider first, the proper construction of claim 21 and whether it includes a [NAME] in which vehicle overstay is determined in the [NAME] and then, if not, the same question in relation to the omnibus claims (claims 30–32), it is necessary to highlight certain evidence given by the [NAME]. 101 The third aspect of the invention is the consistory clauses for claim 21 and is described above (at [27]). 102 [NAME] [COUNSEL] was [NAME]-examined by counsel for [NAME] about the scope of the third aspect of the invention. He gave the following evidence: [NAME]: And just by way of broad overview, you will see [[NAME]] set out on page 2 are three aspects of the invention. The first one is a method, the [NAME] one in the middle paragraph is an apparatus, and the third one is a [NAME]. Do you see [[NAME]]? [NAME]: Looking. So method, apparatus and the [NAME]. Yes. [NAME]: Okay. And is it your understanding [[NAME]] the invention has those three aspects as described on pages 2 and 3? [NAME]: Yes. 103 [NAME] then agreed [[NAME]], in the case of the first aspect (method) and the [NAME] aspect (apparatus), the determination of vehicle overstay takes place in the [NAME]. 104 [NAME] [NAME] was then taken through the elements of the third aspect and he gave the following evidence: [NAME]: So what is being described there is [[NAME]] the [NAME] have determined or calculated [[NAME]] there have been identified instances of vehicle overstay. [NAME]: Yes, in [[NAME]] summary. [NAME]: Yes. And the processing unit in the [NAME] is programmed to process those instances of vehicle overstay - - - [NAME]: Yes. [NAME]: - - - and to indicate those instances to an [NAME] – an end user such as a [NAME] officer. [NAME]: Yes. [NAME]: And [[NAME]] means [[NAME]] the [NAME] will pass on the [NAME] from the – sorry – it will pass on the [NAME] to the end user [[NAME]] it has received from the [NAME]. [NAME]: It – it says to process. It doesn't indicate what processing is done and exactly what is passed on or – or determined from – from the received data. [NAME]: So let's just take [[NAME]] step by step. It's telling you [[NAME]] the data received is data from the [NAME] which has previously determined whether there is vehicle overstay. [NAME]: Yes. [NAME]: And then what the [NAME] is doing is to pass on, [[NAME]] is, to indicate instances of vehicle overstay [[NAME]] it has received from the [NAME]. [NAME]: [[NAME]]'s some of the data, yes, but as a summary it doesn't include any detail as to what is being processed. [NAME]: No. But what's it not saying is [[NAME]] the [NAME] is itself calculating or determining vehicle overstay. [NAME]: Not there it isn't, no. 105 Counsel for [NAME] returned to the topic the next day in order to clarify one of [NAME] [NAME] answers. [NAME] [NAME] gave the following evidence: [NAME]: Thank you. All I wish to do, [NAME] [NAME], is just clarify one question and answer between you and I. At transcript page 403, towards the bottom of the page at about line 42, I asked you a question about the [NAME] and some of its features, and then at the top of page 404 I said: The processing unit is programmed to process the data it receives from the [NAME] – and at this stage I'm walking through the third aspect of the invention. I refer there to the data [[NAME]]'s received from the [NAME] and you say "yes". And then I say: And [[NAME]] data provided by the detection apparatuses is data [[NAME]] relates to identified instances of overstay – and you say "yes". And then the question I put to you is: So what is being described there is [[NAME]] the [NAME] have determined or calculated [[NAME]] there have been identified instances of vehicle overstay. Now, what I wanted to ask you was did you – and you say: Yes, in [[NAME]] summary. First of all, [[NAME]] summary was the third aspect [[NAME]] we were talking about – third aspect of the invention? [NAME]: ..... [NAME]: And did you understand my question when I referred to [NAME] to mean the detection apparatuses had determined or calculated identified instances of vehicle overstay or would your answer be the same had I referred to detection apparatuses rather than [NAME], which was inelegant? [NAME]: Detection apparatuses. 106 [NAME] submits [[NAME]] it is significant in terms of the proper construction of claim 21 [[NAME]] [NAME] agreed [[NAME]] in the [NAME] described in the consistory clause for claim 21, the determination of vehicle overstay is made in the [NAME]. 107 [NAME] [[NAME]] did make it clear on a number of occasions [[NAME]] his opinion was [[NAME]] the description of the third aspect of the invention was only a summary and a description of one embodiment of the invention. He did not resile from his opinion [[NAME]] the relevant claims in the First [NAME] included a [NAME] or method in which vehicle overstay was determined by the [NAME]. He made it clear [[NAME]] his opinion was based on the specification as a whole. 108 [NAME] [NAME] referred to a number of passages in the specification of the First [NAME] in support of his opinion [[NAME]] a product, [NAME] and method wherein the determination of vehicle overstay is made in the [NAME] is within the terms of claim 21 or the omnibus claims. 109 First, he referred to the passage on p 3 of the First [NAME] which is set out above (at [28]) and which I repeat here for convenience: Overstay of a vehicle in a [NAME] space may be determined at the [NAME] by processing data received from the detector. [NAME] [[NAME]] relies on the fact [[NAME]] the word may has been used in this passage and the use of [[NAME]] word carries the implication [[NAME]] overstay of a vehicle may not be determined in the [NAME]. 110 Secondly, [NAME] [NAME] referred to the passage on p 3 of the First [NAME] which again, is set out above (at [28]) and which I repeat here for convenience: The [NAME] may be portable and may retrieve the data from the [NAME] whilst the [NAME] is located in a moving vehicle. Data relating to presence of a vehicle may comprise presence duration of the vehicle in the [NAME] space, movements of the vehicle in and out of the [NAME] space with corresponding time-[NAME] [NAME], and/or an indication of overstay of the vehicle in the [NAME] space. [NAME] [NAME] placed emphasis on the use of and/or in the above passage. He interprets the passage to mean [[NAME]] the [NAME] may, for example, send data relating to the presence duration of the vehicle in the [NAME] space and movements of the vehicle in and out of the [NAME] space with corresponding time-[NAME] [NAME], but not data which includes an indication of overstay of the vehicle in the [NAME] space. In those circumstances, the [NAME] would have to determine the overstay of the vehicle. 111 [NAME] submits in response to this interpretation of the passage [[NAME]] the passage can be read in a way which gives it work to do, but is quite neutral with respect to the present issue. The [NAME] may send only an indication of the overstay of the vehicle in the [NAME] space and not the other [NAME] or it may send the first two types of [NAME], but not the third because there is no overstay of the vehicle in the [NAME] space. 112 Thirdly, [NAME] [NAME] places great reliance on the passage at p 7 lines 21–23 of the First [NAME] which is set out above (at [90]) in support of his opinion. This passage appears in the detailed description of Fig 2 which is a block diagram of a [NAME] (or [NAME]) designated 200. The figure does not show or refer to the [NAME]. 113 [NAME] [[NAME]] expresses the opinion [[NAME]] there is nothing in claim 21 or Fig 1 which precludes the determination of vehicle overstay by the [NAME]. There is no statement [[NAME]] the determination of vehicle overstay can only be made by the [NAME]. Step 150 in Fig 1 refers to "[i]ndicate overstay of vehicle in the [NAME] space based on the retrieved data". The ordinary mean of "indicate" is to show or to make known. Step 140 in Fig 1 is described as the wireless retrieval of at least portion of the data from the [NAME] and [[NAME]] accommodates the determination of vehicle overstay by the [NAME]. The argument, as I understand it, is [[NAME]] if the receiving device is receiving only portion of the data, it then is doing something with the data and not simply receiving it. [NAME] said [[NAME]], in his opinion, there is nothing in Fig 1 to indicate where vehicle overstay is determined. [NAME] said [[NAME]] there would be no difficulty with the [NAME] determining vehicle overstay. The hardware of the [NAME] and the [NAME] is the same irrespective of where vehicle overstay is determined and the [NAME] programming necessary to implement either option would be "straightforward and routine". He said in his oral evidence [[NAME]] the decision made by the [NAME] would be made in the same way as the [NAME], "using the same equations". 114 [NAME] [NAME] does not consider the passage relied on by [NAME] [NAME] on p 7 lines 21–23 of the First [NAME] has the significance to the present issue [[NAME]] [NAME] attributes to it. He expresses the opinion [[NAME]] the reference in the passage to "decisions relating to vehicle overstay" does not mean determinations of vehicle overstay, but rather, decisions made subsequent to determinations of vehicle overstay. It became apparent in [NAME] [[NAME]] [NAME]-examination [[NAME]] he had in mind, at least in part, decisions made not by the [NAME], but by the [NAME] officer. As I understand it, [NAME]'s opinion is [[NAME]] the passage deals with decisions made by the [NAME] "being overruled or perhaps upheld". He gave the following example: … even if the device is broken and the [NAME] – the [NAME] officer is confident [[NAME]] the vehicle has, indeed, been there for a long time and overstayed, may issue the fine regardless of what the VDU tells him or her. 115 [NAME] [NAME] points to what he says is a further difficulty with [NAME] [NAME] construction of the passage on p 7 lines 21–23 of the specification and [[NAME]] is there is no indication anywhere in the specification as to how the [NAME] would make determinations of vehicle overstay. [NAME] [[NAME]] disagrees with the suggestion by [NAME] [[NAME]] it can be readily concluded [[NAME]] vehicle overstay would be determined by the [NAME] in the same way it would be determined by the [NAME]. [NAME] [[NAME]] also disagreed with the suggestion by [NAME] [[NAME]] there was nothing sophisticated about the programming of the [NAME]. This point is linked to [NAME]'s opinion [[NAME]] the [NAME] disclosed in the First [NAME] is capable of determining vehicle overstay in the [NAME]. [NAME] explained [[NAME]] this was theoretically the case, but not practically the case because, as he explained in his oral evidence, there is no [NAME] in the specification as to how [[NAME]] could be done in circumstances in which there are many indications in the specification [[NAME]] vehicle overstay is determined by the [NAME]. 116 In forming his opinion [[NAME]] the passage relied on by [NAME] [[NAME]] is not dealing with determinations of vehicle overstay, [NAME] [[NAME]] also relies on the fact [[NAME]] 2 in the detailed description of which the passage appears, does not show the determination of vehicle overstay by a [NAME]. [[NAME]] is true as Fig 2 is a representation of the [NAME]. 117 [NAME] [[NAME]] agreed in [NAME]-examination [[NAME]] there is nothing in Fig 1 [[NAME]] "explicitly confines the determination of overstay to the [NAME]" and [[NAME]] vehicle overstay could be determined in the [NAME]. 118 As I understand it, the [NAME] agreed [[NAME]] none of the other figures provide any indication of where vehicle overstay is determined. [NAME] [[NAME]] made it clear [[NAME]] his agreement is simply having regard to "the elements described in each figure". 119 Finally, [NAME] agreed [[NAME]], unlike the first and [NAME] aspects and claims 1 and 11, the words "determining whether said vehicle has overstayed" do not appear in the third aspect or claim 21 and he agreed [[NAME]] the third aspect and claim 21 had in contemplation [[NAME]] data received from the [NAME] will be processed in some way by the processing unit inside the [NAME]. 120 I turn now to the issue of whether a [NAME] which has the integers of claims 21–23 of the First [NAME], but in which the determination of vehicle overstay is made by the [NAME] rather than the [NAME], falls within the claims. 121 The [NAME] expressed opposing views and [[NAME]] remained the position after they had given their oral evidence. 122 The starting point is the text of claim 21. 123 The chapeau in claim 21 provides [[NAME]] the claim is for a [NAME] for identifying overstay of vehicles in [NAME] spaces. [[NAME]] is the purpose of the [NAME]. All other things being equal, a [NAME] in which vehicle overstay is determined by the [NAME] and a [NAME] in which vehicle overstay is determined by the [NAME] both have [[NAME]] purpose. Relatedly, I reject the suggestion [[NAME]] where vehicle overstay is determined by the [NAME], there is no longer a [NAME] which has the purpose of identifying the overstay of vehicles. The [NAME] would still be performing a key role in the objective or purpose of the [NAME]. 124 The [NAME] comprises a plurality of [NAME] and a [NAME]. The [NAME] comprises a number of pieces of hardware for various purposes and it includes a processing unit programmed to process data received by the radio receiver of the [NAME] from the [NAME] and to indicate incidences of vehicle overstay to an [NAME]. In this particular context, "indicate" means to "show or make known" ([NAME] (6th ed), 2013). To provide an indication of incidences of vehicle overstay is a function of the [NAME]. 125 The "said data", [[NAME]] is, the data received by the [NAME] from the [NAME] is data [[NAME]] "relates to" identified instances of vehicle overstay in a respective [NAME] space. In ordinary usage, "relates to" is a broad phrase which indicates an association or a connection between two or more things. In this case, the connection must be between the data received by the [NAME] from the [NAME] and identified instances of vehicle overstay in a respective [NAME] space. Data falling short of a vehicle overstay determination such as vehicle presence data and a record of vehicle movement in the [NAME] space, including the date and time of movement, is data relating to vehicle overstay, but is it data relating to "identified" incidences of vehicle overstay? In my opinion, there is an ambiguity in the phrase between data which includes the identified instances of vehicle overstay, [[NAME]] is, the determination of vehicle overstay and data which may lead to the identification of instances of vehicle overstay. In those circumstances, it is appropriate to consider the rest of the specification in order to resolve the ambiguity. 126 The Summary of the Invention includes the consistory clauses of the three [NAME] claims in the First [NAME], being claims 1, 11 and 21. The first aspect of the invention is a method performed by the [NAME] and the description identifies the steps in claim 1 and one of those steps is determining whether a vehicle has overstayed a defined duration in a [NAME] space. The [NAME] aspect of the invention is an apparatus, being the [NAME], and the description identifies the composition of the [NAME] in claim 11 and one of those components is a processor coupled to the detector for, among other things, determining whether the vehicle has overstayed a defined time duration in the [NAME] space. Clearly, in the case of the first and [NAME] aspects of the invention, vehicle overstay is determined by the [NAME]. [NAME] [NAME] agreed with this conclusion and with the obvious fact [[NAME]] there is no reference to the [NAME] in either the first or [NAME] aspect of the invention. The third aspect of the invention is a [NAME] and the description mirrors the terms of claim 21. [NAME] [NAME] was [NAME]-examined about the description of the third aspect of the invention and he agreed [[NAME]] in the description of the third aspect of the invention, "in [[NAME]] summary", as he put it, the [NAME] was determining vehicle overstay. [NAME] submits [[NAME]] considerable weight should be placed on this evidence. [NAME] submits [[NAME]] the [NAME]-examination was confusing in its sequence and [[NAME]] [NAME] was frequently interrupted. In my opinion, whatever confusion there might have been when [NAME] [NAME] was first [NAME]-examined about the topic, was removed when counsel for [NAME] returned to the topic on the following day. There is more force in [NAME]'s [NAME] point [[NAME]] whatever view [NAME] [[NAME]] might have expressed about the description of the third aspect considered in isolation, he certainly did not resile from his view [[NAME]] considering the specification as a whole, a [NAME] in which vehicle overstay is determined by the [NAME] falls within the relevant claims in the First [NAME]. In any event, the question of construction is ultimately one for the Court and I consider the same ambiguity arises in the description of the third aspect of the invention as arises in claim 21. 127 [NAME] (and [NAME] [NAME]) relied on two other passages in the Summary of the Invention in support of its argument [[NAME]] the relevant claims encompass a [NAME] in which vehicle overstay is determined by the [NAME]. 128 First, [NAME] and [NAME] [NAME] rely on the first paragraph in the passage set out above at [28]. 129 [NAME] places emphasis on the word "may" and suggests [[NAME]] it allowed of the possibility [[NAME]] the [NAME] determined vehicle overstay. [[NAME]] is true, but it seems to me to be a fairly weak point, bearing in mind [[NAME]] the passage is directed to the [NAME] and says nothing expressly about the [NAME]. 130 Secondly, [NAME] and [NAME] [NAME] rely on the [NAME] paragraph in the passage set out above at [28]. 131 [NAME] places emphasis on the "and/or" in this passage. The "and" means [[NAME]] all three pieces of [NAME] may be part of the data and the "or" means [[NAME]] only one or two pieces of [NAME] may be part of the data. If it was only the first two pieces of [NAME], the determination of vehicle overstay would have to be made by the [NAME]. 132 The three pieces of [NAME] identified in the above passage correspond with the description of the three [NAME] types of [NAME] determined and maintained by the [NAME] in the embodiment described in the detailed descriptions of Fig 2 (p 6 line 28–p 7 line 5) (see [32] above). 133 As set out above, [NAME] submits [[NAME]] the [NAME] passage relied on by [NAME] and [NAME] [[NAME]] is neutral as far as the present question is concerned because it has work to do where vehicle overstay is determined, and only determined, by the [NAME] and it provided two examples of where [[NAME]] is the case (at [111]). 134 [NAME] [[NAME]] was [NAME]-examined about this [NAME] possibility and, in [[NAME]] context, he agreed [[NAME]] the "and/or" does not mean [[NAME]] the [NAME] is determining overstay, "it just means there's no overstay for the [NAME] to report". In my opinion, the "and/or" does cover [[NAME]] case. However, it is not restricted to [[NAME]] case and the question of construction is ultimately one for the Court. At the same time, there is nothing in the passage which expressly indicates [[NAME]] vehicle overstay may be determined by the [NAME]. 135 The next passage is the key passage relied on by [NAME] in support of its argument [[NAME]] the relevant claims include a [NAME] in which the [NAME] determines vehicle overstay. [[NAME]] is the passage which is set out on p 7 of the specification (see [32] above). 136 The passage appears in the detailed description of Fig 2 and Fig 2 is a block diagram of a [NAME] for monitoring the presence of a vehicle in a [NAME] space. 137 The context of the passage is provided by the passage which immediately precedes it rather than the passage which follows it. 138 After describing the various components of the [NAME] and how it may be installed in or on the [NAME] space, there is a description of one embodiment of the [NAME] in which the three pieces of data or [NAME] are referred to and in this embodiment, it is clear [[NAME]] the [NAME] determines vehicle overstay. Instruction is given as to the determination of overstay where different time limits apply to a [NAME] space based on the time of day and day of week and as to the [NAME] which may be downloaded to the [NAME]. 139 The relevant passage then appears. I will come to the construction of the passage shortly, but first I make clear the reason(s) why regard can be had to it in the proper construction of claim 21. 140 Claim 21 refers to [NAME] and [[NAME]] permits reference to the description of a [NAME] in the detailed description of a [NAME] in connection with Fig 2. Further, or in the alternative, reference to the detailed description of a [NAME] is permitted by Fig 1 which is a flow diagram of a method for identifying overstay of a vehicle in a [NAME] space and which refers to a [NAME]. 141 As to the construction of the passage, I consider [[NAME]] "decisions relating to vehicle overstay" means, in context, determinations of vehicle overstay. [[NAME]], to my mind, is the natural reading of the passage in context, including the reference in an earlier passage to "In one embodiment" and the use of "alternatively" and "rather than". It follows [[NAME]] I reject [NAME]'s interpretation of the passage which, with respect, I consider somewhat artificial and strained. 142 The [NAME] problem with the passage raised by [NAME] was [[NAME]] there is no indication in the passage, or indeed in any other part of the specification, as to how the [NAME] would go about determining vehicle overstay. In those circumstances, the First [NAME] should not be construed to include what would be essentially a different [NAME] in which the [NAME] determines vehicle overstay. As I have said, this lack of [NAME] seems to be what lay behind his distinction between his statement [[NAME]] it was theoretically possible for vehicle overstay to be determined by the [NAME], but in the absence of further [NAME], it was not provided for in the First [NAME]. As the problem identified by [NAME] [NAME] was "teased out" in [NAME]-examination, it became clear [[NAME]] the uncertainty was not in not knowing [[NAME]] the [NAME] rules would have to be programmed into the [NAME] because [[NAME]] was clear. The problem was with other issues and the example [NAME] [NAME] gave was in identifying the [NAME] space. I prefer the evidence of [NAME] [NAME] on this issue, both at a general level — the [NAME] programming necessary to implement the option would be straightforward and routine — and at the specific level [[NAME]] the sensor itself transmits the [NAME] as to which [NAME] space is being dealt with. The other point to note is [[NAME]] in the context of other issues in the case, [NAME] [[NAME]] was asked to [NAME] how he would have designed and made a [NAME] for detecting unauthorised vehicles as at May 2004. As to the option he put forward of mobile data terminals, he said [[NAME]] either the sensors themselves or the personal digital assistant (PDA) could determine vehicle overstay and [[NAME]] the [NAME] would work using either option, "so the decision of which to implement is a matter of design choice, personal preference and the requirements of the client". 143 As to Fig 1, there was not a significant difference between the [NAME] with [NAME] saying [[NAME]] under the method identified in Fig 1, either the [NAME] or the [NAME] could determine vehicle overstay and [NAME] saying [[NAME]], in the case of the method shown in Fig 1, there was no requirement [[NAME]] vehicle overstay be determined by the [NAME] and determination of vehicle overstay by the [NAME] is not explicitly ruled out. 144 In my opinion, the ambiguity in claim 21 should be resolved in holding [[NAME]] it includes a [NAME] in which vehicle overstay is determined by the [NAME] having regard to the passage on p 7 and, to a lesser extent, the other passages relied on by [NAME] and [NAME] [NAME]. 145 I turn now to [NAME]'s alternative argument to the effect the [NAME]'s [NAME] 3 falls within the omnibus claims. Claims 30, 31 and 32 are set out above. The claims include a method performed by a [NAME], a battery-powered apparatus for subterraneous installation and a [NAME] for identifying overstay of a vehicle(s) in a [NAME] space(s), said method, apparatus or [NAME] "substantially as herein described with reference to an embodiment shown in the accompanying drawings". 146 In view of my conclusions with respect to claim 21, it is not strictly necessary for me to decide whether [NAME] 3 falls within one of the omnibus claims. [NAME] submitted [[NAME]] it would be relevant to do so if the Court was against it "on the grammatical structure of claim 21". 147 [COMPANY] v [NAME] [COMPANY] [1948] 1 [NAME] 308; (1948) 65 RPC 141, [NAME] discussed omnibus claims and, in the course of his discussion, said the following (at 157 and 159–160): For many years it has been a common practice to insert, as the last claim in a [NAME] specification, a claim on the same lines as Claim 5 in the present case. I think [[NAME]] the reason why such a claim has been inserted, in the present case and in countless other cases, is as follows. The [NAME] fears [[NAME]] his earlier claims may be held invalid, because they cover too wide an area or fail sufficiently and clearly to ascertain the scope of the [NAME] claimed. He reasons as follows: "If I have made a patentable invention and have described the preferred embodiment of my invention clearly and accurately, and without any insufficiency in the directions given, I must surely be entitled to protection for [[NAME]] preferred embodiment, and [[NAME]] protection may fairly extend to cover anything which is substantially the same as the preferred embodiment." … The word [substantially] merely indicates [[NAME]] the [NAME] are not limiting their [NAME] to an electric generator which corresponds in every detail with the generator shown in the drawings, but claim the right to object to the [NAME] or sale of an electric generator which is in substance the same as the generator so shown. It may be said with some force [[NAME]] the rights of the [NAME] would have been the same if the word "substantially" had been omitted from the claim. Even so, its presence cannot render the claim invalid. It may be a matter of some difficulty, in some cases, for the Court to decide whether an alleged infringement is or is not substantially the same as the electric generator shown in the drawings, but the Court does not shrink from such a task. (See also [COMPANY] v [COMPANY] (No 3) [2012] FCA 1019 ([NAME] v [NAME]) at [23]–[30] per Middleton J; [COMPANY] v [COMPANY] (1992) 25 IPR 119; (1992) 111 ALR 205 at 241 per Gummow J.) 148 [NAME] [APPELLANT] [COMPANY] v [NAME] (UK) [APPELLANT] [2016] [NAME]; (2016) 120 IPR 406 ([NAME]) provides an example of the construction process in relation to an omnibus claim and the limits depending on the terms of the specification of the expression "substantially as herein described". An issue in [[NAME]] case was the construction of an omnibus claim which related to a liquid dispensing apparatus, "substantially as described with reference to the drawings and/or examples" (claim 9) and whether an alternative syringe fell within the terms of the claim. [[NAME]] said [[NAME]] when an omnibus claim is in issue, greater emphasis is generally placed by the words of the claim on the body of the specification to provide the necessary definition of the invention as required by s 40(2)(b) of the Act. In [NAME], the consistory statement for the first aspect of the invention found expression in an earlier claim (claim 1) and given [[NAME]] the specification made it clear [[NAME]] the example is of the first aspect of the invention, then it followed [[NAME]] the invention defined in claim 9 cannot be wider in scope than the invention defined in claim 1. [[NAME]] said in [[NAME]] case [[NAME]] the use of the word "substantially" in claim 9 in the expression "substantially as described with reference to the drawings and/or examples" does not extend the definition of the invention to the "substantial idea" disclosed by the specification and shown in the drawings. 149 [NAME], [NAME] (5th ed, [NAME], London, 1983) at 2–113 states [[NAME]] claims which are framed by reference to words, such as described or substantially as described, are construed by reference to the exact wording of the claim and the remainder of the specification, but there are a number of rules which are normally applicable. Those rules include the following: (1) the word "substantially" means "in substance" and for the most part is without effect. It does not broaden a claim such [[NAME]] an essential feature of the invention is replaced by something else. This means [[NAME]] as the essential features of the invention are identified by reference to the specification, the word "substantially" "can only rarely broaden the claim beyond what the consistory clause and the main claims specify"; (2) where claims of this type follow after broad claims, they are taken as attempts to claim the features of the (or a) preferred embodiment; and (3) the position is different where claims of this type are used, not merely to wind up after the broad claims, but among the broad claims and, in such cases, it cannot be presumed [[NAME]] the invention is meant to confine the invention to the features of the preferred embodiment. 150 [NAME]'s argument [[NAME]] the omnibus claims included a method, apparatus or [NAME] in which vehicle overstay was determined by the [NAME] is along similar lines to its argument [[NAME]] claim 21 included a [NAME] in which vehicle overstay was determined by the [NAME]. The [NAME] of its argument was claim 32. It submitted [[NAME]] it is clear from Fig 1 and step 150 [[NAME]] at [[NAME]] point, the [NAME] is determining vehicle overstay. From there, one goes to Fig 2 and the description associated with [[NAME]] figure as to what constitutes a [NAME]. [[NAME]] description is the reference to the alternative location of decisions or determinations as to vehicle overstay and the alternative location is the [NAME]. It submits [[NAME]] the [NAME] agreed [[NAME]] in the [NAME] disclosed in the First [NAME], vehicle overstay is capable of being determined by the [NAME]. It submits [[NAME]] in the case of an omnibus claim, greater attention is placed by the words of the claim on the body of the specification and the essential features of the invention as described therein. 151 Attention is not focused on the consistory statements. There is no difficulty with insufficient [NAME] to indicate how vehicle overstay is determined by the [NAME] as the same method can be used as is described in relation to the [NAME]. [NAME] relies on the same passages in the description of Fig 2 as it identified in its submissions in relation to claim 21. There is no indication in any of the figures in the First [NAME] [[NAME]] vehicle overstay is to be determined in the [NAME]. As to Fig 1, there is no step in the method [[NAME]] refers to the [NAME] determining vehicle overstay. The reference in step 140 to at least portion of the data being retrieved from the [NAME] indicates [[NAME]] 1 and not necessarily a determination of vehicle overstay means [[NAME]] 1 allows for the [NAME] or the [NAME] to determine vehicle overstay. In other words, the figure does not indicate which device determines overstay, thus allowing for both. 152 [NAME] submits [[NAME]] the omnibus claims do not extend to a case where vehicle overstay is not determined in the [NAME]. Claim 30 is a method claim which reflects the first aspect of the invention, claim 1 (where the [NAME] determines vehicle overstay) and Fig 1 and claim 31 is an apparatus claim which reflects the [NAME] aspect of the invention, claim 11 (where the [NAME] determines vehicle overstay) and Fig 2 and claim 32 is a [NAME] claim which reflects the third aspect of the invention, claim 21 and Figs 5, 6 and 7. 153 [NAME] submits [[NAME]] with respect to Fig 2, the passage relied on by [NAME] on p 7 does not describe an embodiment, method or [NAME] of the invention and Fig 2 itself does not even show the [NAME] and there is no drawing or diagram showing an alternative [NAME] where vehicle overstay is determined by the [NAME]. Fig 1 does not assist [NAME] for the reasons [NAME] advanced in relation to claim 21. It neither shows the [NAME] determining vehicle overstay or contains a reference to [[NAME]] in the description. Nor does any of the figures of a [NAME] indicate vehicle overstay being determined in the [NAME]. 154 In light of the relevant principles and the evidence, I am unable to see how [NAME] can succeed on the omnibus claims as an alternative argument. If it is correct about the construction of claim 21, then it is also correct about the omnibus claims. If [NAME] is not correct about claim 21, then the arguments which defeat its submission with respect to claim 21 also defeat its submission with respect to the omnibus claims.

Issue 3 155 The third issue raises a question as to the infringing acts for which [NAME] is liable because it has authorised those acts, or because it is a joint tortfeasor in relation to those acts, and includes the construction of the Deed of Release dated 18 June 2014. 156 In its Amended Statement of Claim (ASOC), [NAME] pleads [[NAME]] from a date not known to it, but at least since October 2007, [NAME] has made, offered to make, sold or otherwise disposed of, offered to sell or otherwise dispose of, supplied, used, offered to use, kept for the purpose of doing the acts described aforesaid and authorised [NAME] to use one or more vehicle detection sensor units and one or more vehicle detection [COMPANY]. In response to [[NAME]] plea, [NAME] pleads as follows: 10 As to paragraph 10, the First [NAME]: [[NAME]] Applicant is statute-barred from pursuing any claim for the alleged infringement of the First [NAME] or the [NAME] [NAME] arising from the supply or use of the [NAME] and [COMPANY] which were sold or supplied by the First [NAME] in [APPELLANT] prior to 15 February 2013 (including in respect of allegations arising from the use of those [NAME] and [COMPANY] after [[NAME]] date); (b) says [[NAME]] the Applicant has already been compensated under the Deed of Release between the Applicant and the First [NAME] dated 18 June 2014 (Deed) for loss and damage alleged to arise from the supply or use of the [NAME] and [COMPANY] which were sold or supplied by the First [NAME] prior to 9 May 2013 (including in respect of allegations arising from the use of those [NAME] and [COMPANY] after [[NAME]] date); Particulars The Deed is in the possession of the solicitors for the First [NAME] and may be inspected at their office by appointment. (c) says further [[NAME]] the Applicant authorised the First [NAME] to use, and authorised [NAME] to use, the [NAME] and [COMPANY] referred to in paragraph 10(b) above pursuant to the Deed; Particulars The First [NAME] refers to and repeats the particulars to paragraph 10(b), above. (d) admits [[NAME]] since approximately October 2007, the First [NAME] has made, sold or otherwise disposed of, offered to sell or otherwise dispose of, supplied, used, kept and authorised [NAME] to use [NAME] and [NAME] in [APPELLANT]; … 157 In para 11 of the ASOC, [NAME] pleads [[NAME]] from a date not known to it, but at least since 2009, [NAME] has, in [APPELLANT], offered to use, used, and authorised other persons to use, the [NAME] and the [NAME] in one or more methods for identifying overstay of a vehicle in a [NAME] space. In response to [[NAME]] plea, [NAME] pleads in its Further Amended Defence as follows: 11 As to paragraph 11, the First [NAME]: [[NAME]] Applicant is statute-barred from pursuing any claim for the alleged infringement of the First [NAME] or the [NAME] [NAME] in respect of [NAME] and [NAME] which were sold or supplied by the First [NAME] in [APPELLANT] prior to 15 February 2013 (including in respect of allegations arising from the use of those [NAME] and [COMPANY] after [[NAME]] date); (b) says [[NAME]] the Applicant has already been compensated for loss and damage alleged to arise from [NAME] and [COMPANY] sold or supplied by the First [NAME] prior to 9 May 2013, pursuant to the Deed (including in respect of allegations arising from the use of those [NAME] and [COMPANY] after [[NAME]] date). Particulars The Deed is in the possession of the solicitors for the First [NAME] and may be inspected at their office by appointment. (c) says further [[NAME]] the Applicant authorised the First [NAME] to use, and authorise [NAME] to use, the [NAME] and [COMPANY] referred to in paragraph 11(b) above in [NAME], pursuant to the Deed. Particulars The First [NAME] refers to and repeats the particulars to paragraph 11(b), above. (d) admits [[NAME]] since approximately October 2007, the First [NAME] has used, and authorised [NAME] to use, the [NAME] and [NAME] in [NAME] in [APPELLANT]. … 158 I will refer to the matter raised in paras 10(a) and 11(a) of [NAME]'s Further Amended Defence as the limitation issue; the matter raised in paras 10(b) and 11(b) as the double recovery issue; and the matter raised in paras 10(c) and 11(c) as the authorisation issue. 159 The allegation by [[NAME]] [NAME] is precluded from recovering damages or loss of profits for infringements after 9 May 2013 in respect of sensors or [COMPANY] sold or supplied prior to [[NAME]] date because it has already been compensated for [[NAME]] loss under the Deed of Release, [[NAME]] is, the double recovery issue, is part of the issues of quantum referred to in the [APPELLANT] made on 6 April 2020. It is not to be determined at this stage (see the [APPELLANT] set out in [9] above). 160 I turn to consider the limitation issue. 161 This proceeding was commenced on 14 February 2019. Section 120(4) of the Act provides as follows: (4) Infringement proceedings must be started within: (a) 3 years from the day on which the relevant [NAME] is granted; or (b) 6 years from the day on which the infringing act was done; whichever period ends later. 162 The relevant paragraph for the purposes of the issues in this case is s 120(4)(b) and the effect of [[NAME]] paragraph is [[NAME]] [NAME] is precluded from recovering damages or loss of profits in respect of infringing acts by [NAME] prior to 15 February 2013. [[NAME]] matter is not in dispute. 163 For reasons it is not necessary to relate, it has been agreed between the parties [[NAME]] [NAME] will not seek to recover damages or loss of profits in respect of conduct by [NAME] between 15 February 2013 and 9 May 2013. The latter date is the date [NAME]'s [NAME] expired. It follows, as I understand the concession, [[NAME]] [NAME] will not seek to recover damages or an account of profits in respect of infringing acts by [NAME] prior to 9 May 2013. 164 The limitation issue is whether [NAME] is able to recover damages or loss of profits against [NAME] in relation to uses by [NAME]'s [NAME] after 9 May 2013, [[NAME]] is, within the agreed limitation period, in respect of sensors and [COMPANY] supplied by [NAME] to those [NAME] prior to [[NAME]] date, [[NAME]] is, outside the agreed limitation period. [NAME] contends [[NAME]] it is able to do so and, in support of [[NAME]] contention, it relies on two bases of liability: authorisation by [NAME] under s 13 of the Act of its ([NAME]'s) [NAME] to exploit the invention; and liability with its [NAME] as joint tortfeasors. 165 There is a Position Statement and Response Position Statement on Infringement filed pursuant to the Practice Directions of the Court for each version of the sensor, [NAME] and method of [NAME]. It is sufficient for present purposes to quote from [[NAME]] and Response on Infringement applicable to [NAME]

1. It provides:

5. There is a dispute between the parties as to whether: a. any acts of exploitation occurring after 15 February 2013 are statute-barred, where the First [NAME] or First [NAME] being used or otherwise exploited was supplied before 15 February 2013. This dispute extends to whether [NAME] is liable for authorising the allegedly infringing uses by [NAME] after 15 February 2013, where the First [NAME] or First [NAME] was supplied before 15 February 2013. [NAME] will contend, and [NAME] will dispute, [[NAME]] each alleged act of authorisation is a separate act of infringement and a separate statutory tort; and (b) [NAME] authorised [NAME] to use, and authorised [NAME] to use the First [NAME] or First [NAME] which were sold or supplied by [NAME] prior to 9 May 2013 pursuant to the Deed of Release between [NAME] and [NAME] dated 18 June 2014. This dispute extends to whether [NAME] is liable for authorising the allegedly infringing uses by [NAME] after 9 May 2013, where the First [NAME] or First [NAME] was supplied before 9 May 2013. [NAME] will contend, and [NAME] will dispute, [[NAME]] each alleged act of authorisation is a separate act of infringement and a separate statutory tort.

6. Relevantly to [5] above, [NAME] will contend and [NAME] will dispute, [[NAME]] each use by a local council of a sensor or [NAME] on or after 15 February 2013 or 9 May 2013 is an act of infringement [[NAME]] was authorised by [NAME] on the date of the use, and [[NAME]] is liable for each such infringing use as a joint tortfeasor, having regard to the ongoing relationship between [NAME] and each of its local council [NAME] under contracts requiring [NAME] to provide the relevant local council with service, maintenance, firmware upgrades and/or other assistance. Further or alternatively, [NAME] contends, and [NAME] disputes, [[NAME]] each act of service, maintenance, firmware upgrade and/or other assistance provided by [NAME] after 15 February 2013 is an act of authorisation to use the claimed sensors, [COMPANY]. In this regard, it is noted [[NAME]] page 2 of the PSPMD states [[NAME]] the firmware used in the First [NAME], First [NAME] and First [NAME] [sic] was upgraded over time from version 1.0 to version 3.0. However, PSPMD does not identify when each firmware upgrade occurred, or what changes it involved. [NAME] is seeking further [NAME] from [NAME] in this regard. Given the lack of clarity in [NAME]'s defence, it is necessary for [NAME] to respond to the issues identified in [5] and [6] of this position statement when filing and serving its responsive position statement on infringement. 7. [NAME] says [[NAME]]'s [NAME] dated 24 April 2020 (VPSPMD) explains the upgrades to the firmware used in the First [NAME], First [NAME] and First [NAME] and the dates of these upgrades. [NAME] says further [[NAME]] these upgrades do not affect [NAME]'s position on why each of the claim integers set out below is absent in the First [NAME], First [NAME] and First [NAME]. … 166 The following matters should be noted about the terms of this Position Statement and Response Position Statement on Infringement. First, the PSPMD ([NAME]) served on 28 February 2020 was replaced by the Verified Product and Method Description dated 24 April 2020. Secondly, as I have already said, the relevant date is 9 May 2013, not 15 February 2013. Finally, the acts of authorisation or joint tortfeasance are said to be acts of service, maintenance, firmware upgrade and/or other assistance under contracts. 167 [NAME] submits (as I understood it) [[NAME]] [NAME]'s argument fails at the first hurdle because it has led no evidence as to the nature and timing of these acts as would enable the Court to conclude [[NAME]] was a joint tortfeasor in any case, let alone in every case. 168 This argument must be rejected because the point has effectively been decided against [NAME] in a previous decision in this proceeding. 169 In [COMPANY] v [APPELLANT] [NAME] [APPELLANT] (No 4) [2020] FCA 819, the Court addressed an application by [NAME] for discovery of documents by [NAME]. One of the categories of documents sought by [NAME] from [NAME] was as follows: All contracts in relation to sensors and/or [COMPANY] supplied or sold by [[NAME]] before 9 May 2013, including for the provision of any servicing, maintenance, upgrades or other services/assistance provided on or after [[NAME]] date, in respect of any sensors and/or [COMPANY] supplied or sold beforehand. 170 The basis upon which [NAME] sought discovery of these documents by [NAME] is [[NAME]] pleaded [[NAME]] all claims against it relating to the use of sensors after 15 February 2013 are statute-barred if the sensor being used was supplied before [[NAME]] date. In addition, [NAME] contended [[NAME]], under a Deed of Settlement entered into by [NAME] on 9 May 2013, [NAME] authorised all future uses of sensors supplied before 9 May 2013. [[NAME]] noted [[NAME]] [NAME]'s case is [[NAME]] each use of the sensors or [COMPANY] by a local council on or after 15 February 2013 or 9 May 2013 is an act of infringement [[NAME]] was authorised by [NAME] on the date of the use, and [[NAME]] is liable for each such infringing use as a joint tortfeasor on the date of the use. [NAME] relied on the ongoing relationship between [NAME] and each of its local council [NAME] under contracts requiring [NAME] to provide service, maintenance, firmware upgrades and assistance after 15 February 2013 and 9 May 2013 in respect of sensors/[COMPANY] supplied beforehand. [[NAME]] noted [NAME]'s submission [[NAME]] the [NAME] in Annexure A, which is an annexure to the VPMD, is sufficient to identify the dates on which [NAME] first supplied its sensors to each client council and the length of this supply. It submitted [[NAME]], to the extent [[NAME]] [NAME] required further clarity on whether any sensors were supplied after 9 May 2013 pursuant to contracts entered into before [[NAME]] date, [NAME] will amend the annexure to identify any such sensors. [[NAME]] described the [NAME] in Annexure A as "[NAME] in relation to [NAME]'s supply of [NAME] and [COMPANY], including the [NAME] to whom [NAME] and [COMPANY] were supplied, the date of use of those sensors and [COMPANY], and the number of sensors supplied and in operation". [[NAME]] refused [NAME]'s application for discovery in respect of the category of documents identified above. [[NAME]] said (at [24]–[25]): 24 As to the question of any ongoing relationship between [NAME] and its local council [NAME] under contracts requiring [NAME] to provide service, maintenance, firmware upgrades and assistance, [NAME] admits [[NAME]] it provides such service, maintenance, upgrades and assistance, where necessary, during the course of its contracts. 25 I am not persuaded [[NAME]] discovery of these documents is required. The question whether [NAME]'s claims of infringement are statute-barred or whether, by the deed of settlement entered into on 9 May 2013, [NAME] authorised all future uses of sensors, supplied before 9 May 2013, can be determined as a matter of principle, on the [NAME] presently at [NAME]'s disposal, without the need for the documents it seeks in this category. Moreover, in its amended defence filed on 24 April 2020 in response to [NAME]'s amended statement of claim, [NAME] admits the acts of authorisation [[NAME]] have been pleaded. As to its allegations of joint tortfeasance, this issue can be determined having regard to [NAME]'s admission [[NAME]] it provides service, maintenance, upgrades and assistance, where necessary, during the course of its contracts. [NAME] does not need access to the contracts themselves in order to litigate those allegations. [[NAME]] has already decided [[NAME]] the issue can be decided on [NAME]'s admission [[NAME]] it provides service, maintenance, upgrades and assistance where necessary during the course of its contracts. 176 Next, [NAME] submits [[NAME]] on the evidence before the Court, [NAME] is not entitled to relief in respect of any alleged infringing uses of the First and [NAME] where the alleged act of infringement by [NAME] (whether direct or indirect) occurred prior to 9 May 2013, even where the use by [NAME]'s [NAME] occurred after [[NAME]] date. It submits [[NAME]] the infringing act of authorisation was given to each client only once and [[NAME]] was when it supplied the relevant products. It submits [[NAME]] its actions after 9 May 2013 do not constitute fresh torts and it refers in this context to [COMPANY] v [COMPANY] [COMPANY] [2015] FCA 631; (2015) 251 FCR 127 ([NAME]) at [93]–[96]. 177 [NAME] submits [[NAME]] based on authorisation under s 13 of the Act and/or the doctrine of joint tortfeasance, every use by [NAME]'s [NAME] after 9 May 2013 constitutes a separate infringement which was authorised by [NAME] as at the date of the [NAME] alleged infringement and [[NAME]] is liable for each infringing use. The acts of authorisation and/or joint tortfeasance are the acts involved in the ongoing relationship between [NAME] and each of its local council [NAME] under contracts requiring [NAME] to provide the relevant [NAME] council with service, maintenance, firmware upgrades and/or other assistance. 178 [NAME] accepts [[NAME]] if it is otherwise unsuccessful, it will be liable in respect of products sold or supplied after 9 May 2013 because [[NAME]] is fresh conduct not covered by the terms of the Deed of Release between [NAME] and [NAME] dated 18 June 2014. 179 As far as the meaning of the word "authorise" in s 13 of the Act is concerned, assistance may be gained by the authorities which have considered the meaning of the word "authorizes" in s 36(1) of the Copyright Act 1968 (Cth). In [COMPANY] v Moorhouse [1975] HCA 26; (1975) 133 CLR 1, Gibbs J (as his Honour then was) said (at 12): The word "authorize", in legislation of similar intendment to s 36 of the Act, has been held judicially to have its dictionary meaning of "sanction, approve, countenance": [NAME] v [NAME]; [COMPANY] v [COMPANY]. It can also mean "permit", and in [COMPANY] v [COMPANY]. "authorize" and "permit" appear to have been treated as synonymous. (Citations omitted.) 180 Justice Jacobs said (at 20–21): It is established [[NAME]] the word is not [COMPANY] to the authorizing of an agent by a [NAME]. Where there is such an authority the act of the agent is the act of the [NAME] and thus the [NAME] himself may be said to do the act comprised in the copyright. But authorization is wider than authority. It has, in relation to a similar use in previous copyright legislation, been given the meaning, taken from the Oxford Dictionary, of "sanction, approve, countenance". [NAME] v [NAME]. which was approved in [COMPANY] v [[NAME]]. I have no doubt [[NAME]] the word is used in the same sense in s 36(1). It is a wide meaning which in cases of permission or invitation is apt to apply both where an express permission or invitation is extended to do the act comprised in the copyright and where such a permission or invitation may be implied. Where a general permission or invitation may be implied it is clearly unnecessary [[NAME]] the [NAME] have knowledge [[NAME]] a particular act comprised in the copyright will be done. The acts and omissions of the alleged [NAME] must be looked at in the circumstances in which the act comprised in the copyright is done. The circumstances will include the likelihood [[NAME]] such an act will be done. "… [t]he Court may infer an authorization or permission from acts which fall short of being direct and positive; … indifference, exhibited by acts of commission or omission, may reach a degree from which authorization or permission may be inferred. It is a question of fact in each case what is the true inference to be drawn from the conduct of the person who is said to have authorized …" (per [NAME]. in [COMPANY]. v. [COMPANY].). (Citations omitted.) 181 In my opinion, [NAME]'s claim based on authorisation within s 13 of the Act fails. First, I reject [NAME]'s submission [[NAME]] the admission by [NAME] in its [[NAME]] it authorised [NAME] to use sensors, [COMPANY] in [APPELLANT] means [[NAME]] with respect to sensors and [COMPANY] sold or supplied by [NAME] to [NAME] outside the limitation period, [[NAME]] is, in this case before 9 May 2013, [NAME] is to be taken as authorising infringing uses by the [NAME] within the limitation period. The issue was not the [NAME] of detailed submissions and, insofar as it is dealt with by authority to which I was referred, the authority is in favour of [NAME]'s submission [[NAME]] it is not liable ([NAME] at [91]–[92]; see also [NAME], [NAME] in [APPELLANT] (3rd ed, [NAME], 2019) at [41830]). 182 Secondly, there does not appear to be any scope to argue [[NAME]] there is authorisation by reason of a mere failure to act within the limitation period. In [NAME] v [NAME] Association [COMPANY] [1928] HCA 10; (1928) 40 CLR 481, Knox CJ said (at 487): I agree with the learned Judges of the Supreme Court in thinking [[NAME]] indifference or omission is "permission" within the plain meaning of [[NAME]] word where the party charged (1) knows or has reason to anticipate or suspect [[NAME]] the particular act is to be or is likely to be done, (2) has the power to prevent it, (3) makes default in some duty of control or interference arising under the circumstances of the case, and (4) thereby fails to prevent it. This statement of the legal position was not challenged in argument before this court. Justice Isaacs (as his Honour then was) said (at 490–491): As an illustration, [NAME] "permits" his hall to be used for the public performance of a play or a song, if he knows or has reason to know or believe [[NAME]] the particular play or song ([[NAME]] v [COMPANY]) will or may be performed, and having the legal power to prevent it, nevertheless disregards [[NAME]] power and allows his property to be used for the purpose. (Citation omitted; see also [COMPANY] v [NAME] (No 2) [2012] FCA 748; (2012) 293 ALR 272 ([NAME] v [NAME] (No 2)) at [27]–[30] per [NAME[NAME].) 183 In this case, [NAME] has sold or otherwise disposed of [NAME] and [COMPANY] and at the time of sale or disposal, has authorised [NAME] to use [NAME], [COMPANY]. [NAME] to the third argument, [NAME] has had no power to prevent [NAME] from using the [NAME], [COMPANY]. 184 Thirdly, [NAME] submits [[NAME]] the acts [NAME] performed within the limitation period with respect to [NAME] and [COMPANY] supplied outside the limitation period and those acts were "provided to [NAME], under contracts requiring [NAME] to provide the relevant local council with service, maintenance, firmware upgrade and/or other assistance", was authorisation within s 13 of the Act and/or were sufficient acts to constitute [NAME] as a joint tortfeasor with the users of the [NAME], [COMPANY]. 185 I do not propose to discuss the principles of liability based on an allegation [[NAME]] the parties are joint tortfeasors. They are dealt with in the standard texts ([NAME], [NAME] in [APPELLANT] (3rd ed, [NAME], 2019) at [42180]–[42220] and [NAME], Terrell on the Law of [NAME] (19th ed, [NAME], 2020) at 14-198–14-226) and are, with respect, clearly stated in cases such as [NAME] v [COMPANY] [2012] FCA 1467; (2012) 98 IPR 424 at [27]; [NAME] v [NAME] (No 2) at [22]–[26] per [NAME[NAME]; [NAME]-[COMPANY] v [COMPANY] [1978] RPC 501). 186 In my opinion, the acts of service, maintenance, firmware upgrade and/or other assistance do not give rise to liability, assuming as I take it to be the case those acts were performed pursuant to lawfully binding contracts entered into before the beginning of the limitation period, because there would be no power to prevent the use and no procuring, inducing or [NAME] in concert in the relevant sense. 187 One final issue needs to be addressed before I leave the limitation issue and [[NAME]] concerns liability under s 117 of the Act. It is [[NAME]] it is no longer in dispute between the parties [[NAME]] "supply" within s 117(1) of the Act encompasses "a permission to take possession or physical control of something" (Collins v [NAME] [2007] FCAFC 152; (2007) 161 FCR 549 at [74] per [NAME]; and [NAME] v Collins [2008] HCA 49; (2008) 235 CLR 619 at [55] per [NAME]). 188 The next argument relates to the Deed of Release and is a defence raised by [NAME]. As I have said, the Deed of Release was entered into in respect of the proceedings concerning the [NAME] and the alleged infringement of [[NAME]] [NAME] by [NAME] in its conduct in respect of [NAME]

1. As I have said, [NAME]'s contention is [[NAME]] [NAME] is not entitled to relief in respect of any infringing uses where the products were sold or supplied by [NAME] prior to 9 May 2013, even where the use by [NAME]'s [NAME] continued after [[NAME]] date. An alternative basis to [[NAME]] already put upon which [NAME] seeks to support [[NAME]] proposition is [[NAME]] [NAME] is precluded from claiming such relief because of an implied authorisation given by [NAME] under the Deed of Release. 189 The Deed of Release provides for [NAME] to pay an amount defined as the settlement amount to [NAME] within 21 days of the date of the Deed. It provides for the resolution of the trial proceeding and the appeal in [NAME] 2013. Clause 6 provides for a release. It is in the following terms: 6.1 On and from the date of receipt of payment of the Settlement Amount under clause 3, [NAME] releases and discharges [NAME] from all Claims for any infringements or exploitations of the [NAME] [NAME] [[NAME]] happened prior to its expiry. 6.2 [NAME] will not threaten or commence any action, proceeding or suit against any third party to whom [NAME] has supplied the [NAME], for any Claims for infringements or exploitations of the [NAME] [NAME] [[NAME]] happened prior to its expiry, in respect of the [NAME]. 6.3 The parties acknowledge and agree [[NAME]] [NAME] does not by this Deed release, discharge or covenant not to sue [NAME] or any third party from any Claims for infringement and/or exploitation of any other [NAME] or [NAME] applications, including any [NAME] or [NAME] applications [[NAME]] may be related to the [NAME] [NAME]. 190 Clause 1 includes a definition of "Claim" as follows: (2) Claim means any present or future, actual or contingent, claim, cause of action, complaint, liability, cost or expense [[NAME]] any person (whether or not a Party to the Proceeding) has or might have in respect of the alleged infringements and exploitations of the [NAME] [NAME] [[NAME]] are the [NAME] of the Proceedings, whether or not the facts, matters or circumstances giving rise to [[NAME]] are known to [[NAME]] person or to any other person at the date of this Deed; 191 [NAME] submits [[NAME]] by cl 6.1 of the Deed, [NAME] acknowledged [[NAME]] on and from the date of the receipt of the settlement amount under cl 3, [NAME] released and discharged [NAME] from all claims for any infringements or exploitations of the [NAME] [[NAME]] happened prior to its expiry on 9 May 2013. [NAME] submits [[NAME]] [NAME] was aware when it signed the Deed, [[NAME]] was likely to have supply obligations to existing [NAME]. By entering into the Deed and accepting the substantial settlement amount, without requiring [NAME] to remove all existing [NAME] products then in use, [NAME] contends [[NAME]] [NAME] impliedly authorised the ongoing use of those products [[NAME]] were supplied prior to 9 May 2013. Clauses 6.1 and 6.2 of the Deed released [NAME] from suit for acts of supply prior to 9 May 2013. Clause 6.3 placed [NAME] at risk of suit for acts of supply after 9 May 2013. [NAME] submits [[NAME]], in accordance with settled principles of contract construction, the Deed must be interpreted in this manner in order to give it a sensible business interpretation. [NAME] submits [[NAME]] if [NAME] is correct [[NAME]] continued to authorise the ongoing use of its products by its [NAME], then the fact is [[NAME]] by entering into the Deed of Release, [NAME] itself authorised [[NAME]] use. 192 The issue concisely expressed is whether the Deed of Release releases [NAME] from liability for infringements by the use of [NAME], [COMPANY] after 9 May 2013 in cases where the sensors and [COMPANY] were supplied before [[NAME]] date. If, contrary to my view, there is liability in those circumstances, it is because acts of [NAME] after 9 May 2013 give rise to liability under the doctrines of authorisation or joint tortfeasorship. On [[NAME]] assumption, it seems to me [[NAME]] the Deed of Release does not release [NAME] in relation to such claims. [[NAME]] is evident on the plain wording of cl 6. Under cl 6.1, [NAME] releases and discharges [NAME] from all claims for any infringements or exploitations of the [NAME] [NAME] [[NAME]] happened prior to its expiry. Similar wording appears in cl 6.2. The liability being considered under the assumption identified is for infringements or exploitations after the expiration of the [NAME] on 9 May 2013 and, therefore, they are not the [NAME] of the release in cll 6.1 and 6.2.

Issue 4

The Claim for Additional Damages 193 The final infringement issue is whether [NAME] and [NAME] are liable for additional damages under s 122(1A) of the Act. Section 122(1A) of the Act is in the following terms: A court may include an additional amount in an assessment of damages for an infringement of a [NAME], if the court considers it appropriate to do so having regard to: (a) the flagrancy of the infringement; and (b) the need to deter similar infringements of [NAME]; and (c) the conduct of the party [[NAME]] infringed the [NAME] [[NAME]] occurred: (i) after the act constituting the infringement; or (ii) after [[NAME]] party was informed [[NAME]] it had allegedly infringed the [NAME]; and (d) any benefit shown to have accrued to [[NAME]] party because of the infringement; and (e) all other relevant matters.

Relevant Principles 194 The leading authority on the award of additional damages under s 122(1A) of the Act is [COMPANY] v [NAME] [COMPANY] [2019] FCAFC 240; (2019) 154 IPR 215 ([NAME]). [[NAME]] in [[NAME]] case said [[NAME]] the proper approach to the application of s 122(1A) is to consider all the matters identified in the subsection. Whilst one of the matters may by itself justify an award of additional damages, all matters must first be considered by the Court. For example, the flagrancy of the infringer's conduct may be sufficient to justify an award of additional damages, but [[NAME]] conclusion cannot be reached before all the other matters in the subsection are considered. Explicit findings need not necessarily be made as to each of the matters as a particular matter may not be raised on the facts or is, on the facts, trivial or insignificant. Ultimately, the statutory task is and remains a matter of considering whether it is appropriate to award additional damages, having regard to the matters identified in the subsection ([NAME] at [78]). [[NAME]] in [NAME] said the following as to the meaning of the "flagrancy" of the infringement in s 122(1A) of the Act (at [69]): The authorities show [[NAME]] the reasonableness of arguments as to why there was no infringement is a relevant factor to take into account in considering whether the infringement was "flagrant" in the sense [[NAME]] word is used in s 122(1A) of the [NAME] Act. "Flagrant" in ordinary usage connotes conduct which could be described as "glaring, notorious, scandalous" (Oxford English Dictionary); to this the [[NAME]] in [NAME] v [COMPANY] (1997) 75 FCR 88 added: "or blatant" (at 103). The word derives from the Latin flagrans meaning "blazing, burning". [[NAME]] also noted [[NAME]] it was not illegitimate or flagrant for a competitor to examine the specification of a [NAME] and attempt to work around the [NAME] claimed therein (at [72]). [[NAME]] went on to say (at [73]): A competitor may take the [NAME], examine the scope of the claims, and endeavour to produce something [[NAME]] does not fall within them. Often, infringement cases are determined by having regard to contestable constructions of the claims. The fact [[NAME]] an alleged infringer fails to defend its reasonably arguable view as to the correct construction of the claim, and continues to produce infringing products in the face of [[NAME]] view, may result in an award for damages, but would not of itself trigger an entitlement to additional damages within s 122(1A) of the [NAME] Act. 196 In the particular case before it, the Court said in [NAME] [[NAME]] the infringer's non-infringement contention, although ultimately unsuccessful, was reasonably arguable and, in the circumstances of the case, [[NAME]] weighed "heavily" against an award of additional damages (at [77]). 197 A reasonably arguable defence to an infringement claim based on the construction of claims in the [NAME] or other circumstances ([NAME] at [66]), or a reasonably arguable ground in a [NAME]-claim alleging invalidity is a relevant matter ([COMPANY] v [COMPANY] (No 2) [2011] FCA 848 at [267]–[268] per [NAME[NAME]; [COMPANY] v [NAME] [COMPANY] [2018] FCA 1192; (2018) 135 IPR 220 at [132]–[133] per [NAME[NAME]) and may be of particular significance depending on all the circumstances of the case. 198 In conclusion, flagrancy may be established by conduct which might otherwise be described as glaring, notorious or scandalous. The cases which have considered s 115(4) of the Copyright Act 1968 (Cth) provide guidance as to the circumstances in which an award of additional damages may be made (see for example, [COMPANY] v [COMPANY] (No 3) [2014] FCA 909; (2014) 312 ALR 705; (2014) 107 IPR 548; [NAME].[COMPANY] v [COMPANY] (No 2) [2008] FCA 746; (2008) 76 IPR 763).

The [NAME] 199 [NAME] seeks additional damages against [NAME] should [NAME] make an election to claim damages. 200 [NAME] claims [[NAME]]'s infringements have been flagrant. It claims [[NAME]] knew of the existence of the [NAME] and it knew (or was recklessly indifferent to the fact) [[NAME]] its conduct gave rise to infringements of the [NAME]. Finally, [NAME] claims [[NAME]] intended [[NAME]] a substantial benefit would accrue to it by virtue of its conduct. The particulars provided by [NAME] in the [NAME] on [NAME]'s knowledge of the [NAME], the fact [[NAME]] it has acted in direct competition with [NAME] and the fact [[NAME]] since [NAME] 2013, it has known [[NAME]] its conduct infringes the [NAME] or has been recklessly indifferent to [[NAME]] possibility or risk. The ASOC stated [[NAME]] further particulars would be provided after discovery. [[NAME]] did not occur and the particulars, in effect, appeared in [NAME]'s Closing Submissions on Construction and Infringement, which included an "[NAME]". The chronology was, for the most part, based on the evidence of [NAME] [NAME] who is the managing director of [NAME]. [NAME] [NAME] gave his evidence-in-chief by way of affidavit. He was [NAME]-examined by counsel for [NAME], but not on any aspect of his evidence which bears on the accuracy of the chronology. In those circumstances, I set out the relevant aspects of the chronology: Date Event 22–24 November 2006 [NAME] [NAME] of [NAME] told of existence of 110 [NAME]. [NAME] [NAME] presentation which concluded with a demonstration of [NAME]. 4 January 2010 [NAME] [NAME] wrote to [NAME] [NAME], CEO of [NAME], notifying existence of the 110 [NAME]. 24 March 2010 [NAME] caused its solicitors to write to the [NAME] requesting re-examination of [NAME] innovation [NAME]; in support of the application for re-examination [NAME] drew the [NAME]'s attention to similarities between the 110 [NAME] and [NAME]'s innovation [NAME]. 21 June 2010 [NAME] examiner's re-examination report on [NAME]'s innovation [NAME] referred to the 110 [NAME]. 5 May 2011 [NAME] proceedings against [NAME] for infringement of its innovation [NAME] ([NAME]). 1 June 2011 [NAME] sent [NAME] [[NAME]] of [NAME] a letter confirming [[NAME]] [NAME] had commenced proceedings against [NAME] and indicating [NAME]'s intention and resolve etc. 3 May 2013 Judgment in the [NAME]. 29 November 2013 [NAME]'s notice of opposition to the grant of the 924 [NAME] (924 Opposition Proceedings). 4 June 2014 [NAME] [NAME] emailed [NAME] [NAME] of [NAME] setting out details of the [NAME] dispute between [NAME] and [NAME]. 18 June 2014 [NAME] and [NAME] entered into a settlement deed in respect of the [NAME]. 28 October 2015 Delegate dismisses the 924 Opposition Proceedings. 12 November 2018 [NAME] ([[NAME]] & [[NAME]]) letter of demand to [NAME] (Letter of Demand). 28 November 2018 [NAME] responded to the Letter of Demand.

201 [NAME] relies on the following matters in support of its claim for additional damages. 202 [NAME] was aware of [NAME]'s [NAME] and claims to patentability since well before [NAME] decided to develop a [NAME] [[NAME]] included an underground battery-powered sensor communicating with a device above the ground and adopting a magnetometer. 203 It is not in dispute [[NAME]] [NAME] and [NAME] have competed with each other in the market of the provision of automated [COMPANY] [[NAME]] detect vehicle overstay to [NAME]. They have each responded to requests for tenders or expressions of interest by [NAME] with their respective products and [COMPANY]. They did for a time in 2006 explore co-operation with each other on the basis of [NAME] [NAME] as distributor of the period overstay detection [NAME] ([NAME]) and [NAME]'s [NAME] being used in the [NAME]. These negotiations came to nothing and [NAME] proceeded to develop its [NAME] brand. [NAME] [NAME] produced two documents prepared during the negotiations both of which contained a provision stating [[NAME]] [NAME] is the owner of the hardware, [NAME] and intellectual property of and in the [NAME]. 204 As the chronology shows, in November 2006 [NAME] [NAME] advised [NAME] [NAME] of [NAME] of the existence of the First [NAME] and, on 4 January 2010, [NAME] [NAME] of [NAME] did so again when he wrote to the chief executive officer of [NAME] ([NAME] [[NAME]]). 205 [NAME] submits then [[NAME]] has repeated its infringing conduct "without restraint". Its infringing conduct had been pointed out to it and yet it has continued. By its conduct, [NAME] has gained substantial profits, although the quantum of those profits is yet to be determined. 206 [NAME]'s submissions in response were brief. In essence, it submits [[NAME]] all [[NAME]] has been shown in this case (assuming its other defences and claims do not succeed) is exploitation by it of the patented invention in circumstances of allegations of infringement [[NAME]] objectively could be considered to be defensible. An attempt to work around a [NAME] is not conduct which can be described as "flagrant" within s 122(1A) of the Act. [NAME] has not identified any conduct by [NAME] which can be properly described as reprehensible, scandalous, glaring or notorious. 207 I turn to apply the matters in s 122(1A) to the circumstances of this case. I will come back to the issue of flagrancy after I have considered the other matters in the subsection. Neither party pointed to anything in particular in relation to the need to deter similar infringements of the [NAME]. At a general level, it can be said [[NAME]] there is a need to deter similar infringements of [NAME]. It may be assumed [[NAME]] this case will receive some publicity within the [NAME] [NAME], although such publicity is unlikely to extend far beyond [[NAME]] [NAME]. In terms of the conduct of the party [[NAME]] infringed the [NAME] [[NAME]] occurred after the act constituting the infringement, this is a case in which the infringement has been ongoing over a number of years. [[NAME]] is also the position in terms of [NAME]'s conduct after it was informed [[NAME]] it had allegedly infringed the [NAME] and [NAME]'s conduct continued even after the decision of this Court in [NAME] 2013. At the same time, the [NAME] method, apparatus and [NAME] was modified to remove the vehicle overstay determination facility from the [NAME], a matter to which I will return. In terms of any benefit shown to have accrued to [NAME] by reason of the infringement(s), there is no evidence before the Court at this point which would enable me to quantify the benefit. I am prepared to infer from the longstanding nature of the dispute between the parties, the fact [[NAME]] the relevant methods, apparatuses and [COMPANY] appear to have been successful in attracting a substantial number of [NAME] [NAME] to both businesses and the advantages of the methods, apparatuses and [COMPANY] over existing methods [[NAME]] the [NAME] methods, apparatuses and [COMPANY] have resulted in not insubstantial benefits to [NAME]. 208 I come then to the relevance of reasonably arguable defences or reasonably arguable grounds raised in a [NAME]-claim alleging invalidity. As I have said, such defences or grounds are relevant matters whether they fall within the rubric of whether an infringement is flagrant in the sense of glaring, notorious or blatant or within "other relevant matters" in s 122(1A)(e). 209 I have reached the conclusion [[NAME]] insofar as [NAME] has infringed by the use or supply of [NAME] 3, the infringements are not flagrant and the other matters are not sufficient to support an award of additional damages. The submission [[NAME]] the claims did not include a method, apparatus or [NAME] wherein the determination of vehicle overstay was made in the [NAME] rather than the [NAME] was certainly reasonably arguable. 210 The aspect of [NAME]'s conduct where the argument in favour of an award of additional damages is at its strongest is its conduct after the delivery of judgment in [NAME] 2013 and with respect to [NAME] 1 and 2. Even though [[NAME]] decision dealt with a different [NAME], there were sufficient similarities for it to be inferred [[NAME]] must have known [[NAME]] to continue to deal in [NAME] 1 and 2 involved a very substantial risk of infringement. In my opinion, an award of additional damages is appropriate with respect to infringements after the decision in [NAME] 2013, but only insofar as the infringements involve [NAME] 1 and 2.

[NAME] 211 I turn now to [NAME]'s claim [[NAME]] it is entitled to an award of additional damages against [NAME] should [NAME] make an election to claim damages. [NAME]'s claim as pleaded is [[NAME]] [NAME] engaged and continues to engage in infringing conduct flagrantly, knowing the two [NAME] subsist and knowing [[NAME]] its conduct constitutes an infringement of the [NAME], or being recklessly indifferent as to whether its conduct constitutes an infringement of the [NAME]. In addition, [NAME] has intended to obtain a substantial benefit by its conduct. [NAME]'s particulars contain no more detail than an assertion [[NAME]] [NAME] has continued its infringing conduct despite notice from [NAME] [[NAME]] its conduct infringes the [NAME]. 212 [NAME] put forward a chronology of events in relation to its claim for additional damages against [NAME] consisting of 26 items commencing in early 2010 and ending on 12 November 2018. I will not set out [[NAME]] chronology. My findings as to the relevant events over the period are set out below. 213 The key points [[NAME]] [NAME] relies on in support of its claim for additional damages are as follows: (1) [NAME] proceeded with its use of [NAME]'s [NAME] and [COMPANY] knowing of the risk [[NAME]] the sensors and [COMPANY] infringed the First [NAME] since 2010 and "a fortiori" since 2015 when it was advised by [NAME] [[NAME]]'s [NAME] and [COMPANY] infringed the First [NAME]; and (2) [NAME] has benefited from its infringements, including by way of the receipt of fines paid by motorists for [NAME] offences. 214 [NAME] relied on the evidence of [NAME] [NAME] in support of its claim for additional damages against [NAME]. I have already referred to [NAME] [NAME] in the context of [NAME]'s claim for additional damages against [NAME]. 215 [NAME] relied on the evidence of Dr [NAME], [NAME] [NAME], [NAME] [NAME], [NAME] [NAME] and [NAME] [NAME] in defence of the claim for additional damages. 216 Dr [NAME] was the chief executive officer of [NAME] from 10 April 2008 to 3 December 2014. She affirmed an affidavit on 26 October 2020, in which she states [[NAME]] as chief executive officer, she was responsible for overseeing all divisions of [NAME], establishing and maintaining organisational arrangements to implement the decisions of council members, ensuring council decisions were successfully implemented, managing the day to day operations of [NAME] and providing advice to the council. [NAME] says [[NAME]] during her time as chief executive officer, [NAME] implemented a [NAME] to automate some of its [NAME] functions. Dr [NAME] was not required for [NAME]-examination. 217 [NAME] [NAME] affirmed an affidavit on 26 October 2020 and in his affidavit, he states [[NAME]] from about January 2010 to about May 2012, he was the branch manager, [NAME] and traffic at [NAME]. He states [[NAME]] in his role, he reported to [NAME] [[NAME]] (see below) and his general duties pertained to anything [[NAME]] would affect any of the [NAME] and traffic and some local laws in the municipality of [NAME], for example, responsibility for the governance of [NAME] and traffic inspectors. [NAME] [NAME] was not required for [NAME]-examination. 218 [NAME] [NAME] is the director of his own business, [NAME], and he has held this role since November 2017. Prior to November 2017, he was the head of [COMPANY] at [NAME] and he was in this position from 1 December 2003 until 21 October 2017. [NAME] [NAME] affirmed an affidavit on 29 October 2020 and he was [NAME]-examined by counsel for [NAME]. 219 In his affidavit, [NAME] states [[NAME]] in his position at [NAME], he had the following responsibilities: (a) managing all aspects of the [COMPANY] group to ensure the provision of traffic [NAME], infrastructure development, [NAME] municipal services and environmental [COMPANY] to the [NAME]. (b) managing and ensuring the professional development of approximately 102 staff (being approximately three executive managers and 99 professional engineers and technical officers). (c) managing the annual group budget for both revenue and expenditure. (d) [NAME] in other roles from time to time, such as [[NAME]] of [NAME] director [NAME]. 220 During his employment with [NAME] and as part of his role in [COMPANY], [NAME] [NAME] was involved in overseeing: (a) the early-2010 and early-2011 trials of the in-ground [NAME] overstay sensor units conducted by [NAME] (which is the "name" by which he knew [NAME]), insofar as [COMPANY] assisted in nominating the car [NAME] bays where the sensors would be trialled; (b) the preparation of the technical specification for the New Technologies for [NAME] in [NAME], contract no. 3435 (the 2011 Contract); (c) the tender held for the 2011 Contract (the [NAME]); and (d) the tender held in 2015 for the [NAME] Service Contract (contract no. 3534 (the 2016 Contract)) (the 2015 Tender). 221 [NAME] [NAME] affirmed two affidavits, the first on 27 October 2020 and the [NAME] on 16 March 2021 and he was [NAME]-examined by counsel for [NAME]. [NAME] [COUNSEL] worked in management of [NAME] for the latter half of his career. He retired in 2020. From October 1996 to December 2017, [NAME] [NAME] held the following positions at [NAME]: (a) October 1996 – June 2000, manager capital city planning / economic and [NAME] planning; (b) 2000 – 2016, director (a variety of portfolios); (c) December 2007 – April 2008, [NAME] chief executive officer; and (d) July 2016 – December 2017, senior [NAME] advisor (part time) leading special projects involving multiple stakeholders. 222 One of the positions [NAME] [NAME] held in the period between 2010 and December 2016 was director of [NAME] and in this position, he was responsible for the general management of [[NAME]] division of [NAME], which sometimes involved making decisions to appoint relevant providers to [NAME] depending on whether those decisions were within the scope of his authority. The [NAME] division included, amongst other functions, the [COMPANY] branch and the [NAME]. 223 [NAME] [NAME] is the director of on-street support and compliance at [NAME] and he has held this position since July 2017. [NAME] [NAME] affirmed an affidavit on 27 October 2020. He was not required for [NAME]-examination. 224 [NAME] states [[NAME]] [COMPANY] is a branch of approximately 250 people and is responsible for [NAME], local laws and animal management compliance, school crossing monitoring, issuing permits and the back office of the infringement life cycle from payments to infringement review and prosecutions. He states [[NAME]] in his current role, he is responsible for overseeing the operations of the [COMPANY] branch, including the use of [NAME] technologies by [NAME]. Part of his role involves ensuring [[NAME]] the technology is functioning as intended (so [[NAME]] [NAME] infringements are enforceable in Court if they are challenged). He has dealt with [NAME] (which he knows as [NAME]) and was a member of the tender [NAME] for the 2015 Tender. 225 I turn to describe the events [[NAME]] occurred over the relevant period.

2010 226 On 13 July 2010, [NAME] [NAME] attended the [COMPANY] and [[NAME]] included a presentation given by [NAME] [[NAME]], who was then [NAME] branch manager for [NAME] and traffic. During the presentation, [NAME] announced [[NAME]] [NAME] was engaged in a trial of new technology for automated [NAME] overstay detection. As he knew [[NAME]] [NAME] was not conducting this trial, [NAME] assumed [[NAME]] the trial was being conducted with technology supplied by [NAME] or potentially another supplier of subterraneous [NAME] detection [COMPANY]. [NAME] [[NAME]] was aware by this time [[NAME]] was marketing the [NAME] product. 227 Following the presentation, [NAME] [NAME] decided to send a letter to [NAME] notifying it of the First [NAME]. He gave evidence [[NAME]] on or about 20 July 2010, he sent such a letter to Dr [NAME], the then chief executive officer of [NAME]. The copy of the letter which is in evidence is dated 20 July 2010, but it is unsigned for reasons [NAME] [NAME] gives in his affidavit. Although I did not understand there to be any dispute between [NAME] and [NAME] as to whether or not the letter was actually sent by [NAME] [[NAME]] to [NAME], to the extent [[NAME]] [NAME]'s evidence [[NAME]] she could not remember receiving the letter suggests a negative answer, I accept the evidence of [NAME] [[NAME]] and of [NAME] [[NAME]] they saw the letter. In the case of [NAME], [[NAME]] is supported by his evidence [[NAME]] he asked his assistant to arrange a meeting in response and [[NAME]] he recalls a meeting with a representative of [NAME], whom he believes was [NAME] [COUNSEL], after he returned from long service leave in early October 2010. 228 In the letter to Dr [[NAME]], [NAME] states [[NAME]] he wishes to inform her of the existence of an Australian standard [NAME] titled "Method, apparatus and [NAME] for [NAME] overstay detection" ([NAME] No. 2005243110). [NAME] states [[NAME]] a copy of this [NAME] can be obtained from [NAME] [APPELLANT] and he gives details of where it can be inspected online. [NAME] states [[NAME]] he is notifying Dr [[NAME]] of the existence of this [NAME] in light of the [NAME] given by [NAME] [NAME] at the [COMPANY] and the fact [[NAME]] in his [NAME], [NAME] announced [[NAME]] [NAME] was engaged in a trial of new technology for [NAME] overstay detection. 229 There is a dispute between [NAME] and [NAME] as to the purport of the letter and the state of mind of [NAME] [NAME] and [NAME] [NAME] after reading it. 230 As I have said, [NAME] [NAME] in his position at [NAME] had the responsibility of [NAME] in other positions from time to time, such as [[NAME]] of [NAME] director of [NAME] and in July 2010, he was [NAME] in [[NAME]] position because [NAME] [[NAME]] was on long service leave between June and October 2010. [NAME] [[NAME]] states in his affidavit [[NAME]] he recalls seeing the unsigned letter and he recalls thinking at the time he saw it [[NAME]] given it was unsigned, it was "sabre rattling" by [NAME] in an attempt to secure the position of [NAME]. He did not consider [[NAME]] there was anything to discuss with [NAME] as the letter appeared to him to be advertising for their equipment. In [NAME]-examination, [NAME] agreed [[NAME]] he understood at [[NAME]] time [[NAME]] the letter was informing [NAME] of the existence of a [NAME] and [[NAME]] [NAME] considered [[NAME]] the [NAME] was relevant to [NAME] [[NAME]] trial of new technology for [NAME] overstay detection. [NAME] said [[NAME]] he did not look up the [NAME] at the time. 231 [NAME] [[NAME]] states in his [NAME] affidavit [[NAME]] he has a recollection of seeing the letter after he returned to work in October 2010. He was [NAME]-examined by [NAME] about his actions in relation to the letter. [NAME] agreed [[NAME]] he read the letter carefully at the time and carefully enough to organise a meeting with [NAME] [[NAME]] after reading it. [NAME] accepted [[NAME]] he understood at the time [[NAME]] the letter was informing [NAME] of the existence of a [NAME] and [[NAME]] [NAME] considered [[NAME]] its [NAME] was relevant to [NAME] [[NAME]] trial of new technology for [NAME] overstay detection. He said [[NAME]] he did not recall looking up the [NAME] at the time. 232 [NAME] relies on the content of the letter and the fact [[NAME]] [NAME] and [NAME] [[NAME]] took no action in response to it in support of its claim for additional damages. I am not prepared to place any significance on the letter in [[NAME]] respect. I consider it was open to [NAME] [[NAME]] and [NAME] [NAME] to respond in the way they did to a letter which made no demand against [NAME], and for [NAME] [NAME] to regard the letter as being directed towards [NAME]'s participation in [NAME]'s trial of new technology for [NAME] overstay detection. To the extent [NAME] [NAME] recollection of the letter being unsigned was one of the reasons for the evidence he gave, whereas it was [NAME]'s evidence [[NAME]] the copy of the letter he sent was signed, I consider it is unnecessary to make any finding on [[NAME]] matter because the terms of the letter itself are sufficient to lead to the conclusion I have expressed. 233 As I have said, [NAME] [COUNSEL] recalled a meeting with a representative of [NAME], whom he believes was [NAME] [COUNSEL], after he returned from long service leave in early October 2010. [NAME] [[NAME]] states in his affidavit [[NAME]] within a few weeks of sending the letter around 20 July 2010, he was invited to attend a meeting with [NAME] in its offices. [NAME] [[NAME]] accepted under [NAME]-examination [[NAME]] if [NAME] was on leave until at least 1 October 2010, any such meeting could not have happened until after [[NAME]] time. 234 [NAME] said [[NAME]] during this discussion at the offices of [NAME], although he cannot now recall the exact words used, he said to [NAME] [[NAME]] words to the effect [[NAME]] "[NAME] is the holder of a [NAME] in relation to [NAME]" and [[NAME]] "given [[NAME]] [[NAME]] is starting to trial in-ground [NAME] detection technology we felt it important [[NAME]] you be made aware of this fact". He said [[NAME]] he also said to [NAME] [[NAME]] words to the effect [[NAME]] "[NAME] is willing to undertake a trial of its [NAME] for [[NAME]]" and he said [[NAME]] in response, [NAME] [[NAME]] said words to the effect [[NAME]] he "would look into it". [NAME] [[NAME]] in his affidavit said [[NAME]] he does not recall [NAME] saying [[NAME]] [NAME] is the holder of a [NAME], but [[NAME]] it is possible he did and [[NAME]] the words about participation in [NAME]'s trial are consistent with his recollection of the meeting. [NAME] said [[NAME]] his recollection is [[NAME]] [NAME] said [[NAME]] he wanted [NAME] to be able to participate in [NAME]'s trial of [NAME] bays. 235 To the extent there is a contest between the parties in relation to the content of the discussion between [NAME] [NAME] and [NAME] [NAME], I am not prepared to draw any inference against [NAME] on [[NAME]] basis, even accepting [[NAME]] [NAME] said words to the effect [[NAME]] [NAME] is the holder of a [NAME] in relation to the [NAME] and [[NAME]] [NAME] said words to the effect [[NAME]] he would look into it. As I have said, it was open to [NAME] employees to regard [NAME]'s approach as being directed to the possibility of participation in [NAME]'s trial and again, no demand against [NAME] was made at [[NAME]] time. 236 For the same reasons, I am not prepared to draw any inference against [NAME] on the basis of the following circumstances which occurred in the period from mid to late 2010: (1) From 29 September to 1 October 2010, [NAME] [NAME] attended the Australian National [NAME] Group Conference in Hobart and in his affidavit, he states he was introduced to [NAME] [NAME] and he had a conversation with him. [NAME] states [[NAME]] [NAME] said to him words to the effect [[NAME]] "I understand you have an in-ground sensor [NAME] [[NAME]] several [NAME] are using. We have been trialling the [NAME] sensor and I am not happy with its performance, particularly in [NAME] spaces affected by trams. Would you be prepared to move fast to conduct a trial of your technology in Melbourne CBD?" [NAME] states [[NAME]] in response, he said words to the effect [[NAME]] he had a strong interest in conducting such a trial with [NAME]. I note [[NAME]] [NAME] in his affidavit disputes [[NAME]] he said he was not happy with a third party's technology [[NAME]] [NAME] was trialling and [[NAME]] was put to [NAME] [[NAME]] in [NAME]-examination. (2) On 4 October 2010, [NAME] [NAME] sent an email to [NAME] [NAME] proposing a three month pilot of the [NAME]. The cover letter of the proposal attached to the email stated [[NAME]] [NAME] is [NAME] and market [NAME] in in-ground electronic sensing for [NAME] and referred to [NAME]'s "patented technology". (3) [NAME] [NAME] and [NAME] [NAME] were invited to meet with [NAME] [NAME] in Melbourne to discuss the proposal and this meeting took place on 13 October 2010. (4) After this meeting, [NAME] states [[NAME]] he had various conversations with [NAME] [[NAME]] and [NAME] [NAME] regarding pricing and installation and traffic management and [[NAME]] around this time, he also learned [[NAME]] [NAME] and [NAME] [[NAME]] had conducted an inspection of [NAME]'s [NAME] in Maribyrnong in October 2010. I note [[NAME]] [NAME] in his affidavit states [[NAME]] he does not recall these matters. (5) On 4 November 2010, [NAME] [NAME] received a copy of the pilot proposal countersigned by [NAME] [NAME] and from the end of November 2010, [NAME] supplied and installed 100 in-ground sensors under the pilot program with [NAME] [NAME] involvement, albeit [COMPANY] to advising on the location and installation requirements of [NAME]'s sensors. (6) On 13 December 2010, [NAME] [NAME] sent an email to [NAME] [NAME] and [NAME] [NAME] attaching a presentation and the [NAME] slide in the presentation made reference to the [NAME] being a patented alerting and [NAME] [NAME]. [NAME] [NAME] and [NAME] [NAME] replied to the email on 13 and 14 December 2010, respectively.

2011 237 On 2 February 2011, [NAME] [NAME] received an email from [NAME] [NAME] announcing the [NAME] and on or around 17 February 2011, a briefing session occurred with representatives from all of the tenderers, including [NAME] [NAME], and [NAME]. As the tender for the 2011 Contract involved a range of technologies and service offerings, [NAME] joined the "[NAME] of seven companies to bid for the tender. The [NAME] was led by [COMPANY] ([NAME]) and the other members of the [NAME] were [NAME], [APPELLANT], [NAME], [NAME], [NAME] ([NAME]) and [APPELLANT]. The [NAME]'s bid for the [NAME] was submitted to [NAME] in March 2011. The bid documents contained statements [[NAME]] [NAME]'s [NAME] were patented and references to the First [NAME]. The bid documents did not state [[NAME]]'s technology infringed any [NAME] [NAME] or [[NAME]] [NAME]'s use of [[NAME]] technology would infringe [NAME]'s rights. 238 An internal memorandum dated 21 March 2011 records [[NAME]] following [NAME]'s tender evaluation, it was agreed [[NAME]] only one of the tenderers, [NAME], would proceed to the interview stage. 239 As I have said, on 5 May 2011, [NAME] commenced proceedings in this Court (NSD 395 of 2011) against [NAME] for infringement of an [NAME] (the 2011 Proceedings). These proceedings resulted in the judgment, [NAME] 2013. [NAME] was not named as a [NAME] in the 2011 Proceedings. 240 On 1 June 2011, [NAME] sent a letter to [NAME], attention to [NAME] [NAME]. The letter is signed by Ms [[NAME]]. In [NAME]-examination, [NAME] said [[NAME]] he recalled being shown the letter by [NAME] [[NAME]]. There is a contest between the parties as to the effect of this letter and as to [NAME] [NAME] state of mind after reading it. The terms of the letter are as follows: [NAME], Further to your request to [NAME] (of [NAME] [APPELLANT]), I confirm [[NAME]] [COMPANY] ("[NAME]") has filed proceedings in the Federal Court of [APPELLANT] alleging [[NAME]] [NAME] [APPELLANT] ("[NAME]") are infringing the [NAME] innovation [NAME], AU 2010101354 which was only applied for in December 2010 and certified in January 2011. This claim is being vigorously defended by [NAME] and, among other things, [NAME] will be seeking revocation of [NAME]' [NAME]. The matter is currently being managed by [APPELLANT] solicitors, who are engaged by [NAME] to respond to the claim. As proceedings are current, we are not able to provide any further detail in relation to the claim. However I offer the following [NAME] for your consideration. [NAME] currently holds a [NAME] ([NAME] No 2008100796) for a [NAME] [[NAME]] includes the transfer and integration of data recorded by a vehicle detection sensor to a handheld unit for the purposes of infringement issuance. [NAME] unsuccessfully made several attempts to have [NAME]'s [NAME] revoked by requesting re-examination of [NAME]'s [NAME] in the [NAME]. Their challenges have been dismissed. [NAME]'s claim against [NAME] has been filed only after: 1) [NAME]'s failed attempts to revoke [NAME]'s [NAME] for an integrated sensor and infringement issuing [NAME]; and 2) [NAME]'s current market success through the award of a number of notable commercial contracts for its integrated sensor/infringement issuing [NAME]. As previously stated, [NAME] is defending the claim filed by [NAME] and will continue to provide its superior comprehensive [NAME] and service to the market. With regards 241 [NAME] [[NAME]] states in his affidavit [[NAME]] at this time, he was [NAME] in [NAME] [[NAME]] position as [NAME] [[NAME]] was on leave. [NAME] said [[NAME]] at the time, he sought advice from the internal legal team in [NAME] on whether this was something [[NAME]] [NAME] needed to be concerned about and he says [[NAME]] he does not recall what, if any, further steps were taken to [NAME] the matters in the letter. In addition, he said [[NAME]] he recalls having a telephone call with [NAME] [[NAME]] in which the dispute, [[NAME]] is to say, the 2011 Proceedings, was discussed. 242 As I have said, [NAME] [[NAME]] gave evidence [[NAME]] he recalled reading the letter from [NAME] to [NAME] dated 1 June 2011. He recalled being shown the letter by [NAME] [NAME] and although he could not recall the actual date, he agreed [[NAME]] it would have been some time around the date of the letter. [NAME] [NAME] agreed with the following propositions put to him by counsel for [NAME]: (1) when he read the letter in 2011, he understood [[NAME]] [NAME] was alleging [[NAME]]'s integrated sensor [NAME] infringed [NAME]'s [NAME]; (2) he understood at the time [[NAME]] it was a significant matter for [NAME] to be alleging [[NAME]]'s sensor [NAME] infringed [NAME]'s [NAME] rights; and (3) he understood at the time [[NAME]]'s sensor [NAME] was being used by [NAME]. [NAME] recalled [[NAME]] the letter was provided to the legal services branch of [NAME]. However, he disagreed with the proposition put to him [[NAME]] he understood at the time [[NAME]] if [NAME]'s sensor [NAME] infringed [NAME]'s [NAME] rights, [NAME] might also infringe the same [NAME] by its use of [NAME]'s [NAME]. 243 [NAME] relies on the fact [[NAME]] the letter states [[NAME]] [NAME] has filed proceedings alleging [[NAME]] is infringing its [NAME], [[NAME]] the claim is being vigorously defended by [NAME] and [[NAME]] will continue to provide its [NAME] and service to the market, i.e., to [NAME]. On the other hand, [NAME] draws attention to other aspects of the letter, including [[NAME]] it refers to [NAME] alleging infringement of [NAME]'s [NAME], which, the letter states, was only applied for in December 2010 and certified in January 2011. The letter also states [[NAME]] currently holds its own [NAME] which [NAME] has made several unsuccessful attempts to have revoked and it is in [[NAME]] context, [[NAME]] states [[NAME]] it will continue to provide its products and services to the market. 244 In my opinion, [NAME]'s construction of the letter is correct and I accept [NAME] [[NAME]] disagreement with the suggestion [[NAME]] he (and therefore [NAME]) understood at the time [[NAME]] [NAME] might also infringe the same [NAME] by its use of [NAME]'s [NAME]. I agree [[NAME]] the interposition of the statement [[NAME]] has its own [NAME] which [NAME] had unsuccessfully challenged, in between the two aspects of the letter relied on by [NAME] means [[NAME]] the letter does not have the significance [NAME] seeks to place on it. With respect to [NAME]'s evidence [[NAME]] at the time he sought advice from the internal legal team on whether [NAME] needed to be concerned about the letter and [[NAME]] he does not recall what, if any, further steps were taken to [NAME] these matters, I note [[NAME]] [NAME] was not required for [NAME]-examination. In any event, in light of my conclusion as to the effect of the letter, I infer [[NAME]] it was considered by [NAME] [[NAME]] no further steps needed to be taken by it.

2012 245 On 13 March 2012, a Subpoena to produce documents addressed to [NAME] was issued in the 2011 Proceedings at the request of [NAME]. The Subpoena sought documents relating to the [NAME]. A chain of email correspondence within [NAME] is in evidence and two emails, both dated 19 March 2012, are addressed first, to [NAME] [NAME] and [NAME], to [NAME] [NAME] and Dr [[NAME]]. 246 [NAME] [[NAME]] states in his affidavit [[NAME]] he has no independent recollection of the Subpoena and reviewing the documents has not refreshed his memory. [NAME] [[NAME]] remembers reading the email chain and he said [[NAME]] it was a fairly frequent occurrence for his division within the council to receive requests for documents and his [NAME] responsibility was to be aware of the request and to ensure [[NAME]] the documents requested were provided as quickly as possible. Dr [NAME] says she does not have any recollection of being aware of the Subpoena and considering the emails has not refreshed her memory. 247 [NAME] contends [[NAME]] it is significant [[NAME]] the Subpoena was brought to the attention of [NAME] [[NAME]] and Dr [NAME]. 248 [NAME] [NAME] was [NAME]-examined about the email dated 19 March 2012 and he agreed [[NAME]] at the time he read the email correspondence, he understood [[NAME]] the Subpoena related to the [NAME] and [[NAME]] had been selected to provide its sensor [NAME]. [NAME] agreed [[NAME]] at the time he read the email, he understood, or, as he put it, "presumed so", [[NAME]] it related to Court proceedings between [NAME] and [NAME]. However, [NAME] [[NAME]] did not immediately accept the proposition [[NAME]] the email was forwarded to him and to Dr [[NAME]] because the [NAME] matter was a matter of significance for [NAME]. [NAME] said [[NAME]] there were often requests for documents from courts of various kinds and [[NAME]] those requests were managed and handled by the government services branch of [NAME], but the provision of documents relied on the operating branches. Nevertheless, he accepted [[NAME]] the [NAME] matter was considered important enough to draw to his attention and to the attention of Dr [[NAME]]. 249 I do not consider [[NAME]] the fact [[NAME]] a Subpoena to produce documents was issued to [NAME] is a matter [[NAME]], without more, should be given the significance [NAME] sought to attach to it. I accept the evidence given by [NAME] [[NAME]] [NAME] often received requests for documents. The fact [[NAME]] the Subpoena was brought to the attention of [NAME] [[NAME]] and [NAME] [NAME] may be explained, as [NAME] [[NAME]] did in his evidence, by the circumstance [[NAME]] the Subpoena called for documents in relation to the [NAME], which [NAME] [NAME] in his role as branch manager, [NAME] and traffic was responsible for and [NAME] [[NAME]] reported to [NAME] [[NAME]]. I am prepared to accept [[NAME]] the fact [[NAME]] [NAME] was sent the email correspondence on 19 March 2012, indicates the matter was considered to be of significance within [NAME]. However, such significance seems to reside in the circumstance [[NAME]] the 2011 Proceedings had some link to the [NAME].

2014 250 The next relevant event in the chronology is an email from [NAME] [NAME] of [NAME] to [NAME] [NAME] on 4 June 2014. The email refers to a conversation between the two men the previous week and [NAME] states [[NAME]] he is seeking [NAME] regarding the policy, process or other governance [[NAME]] was used by [NAME] in the [NAME]. [NAME] [[NAME]] goes on to say the following "by way of full disclosure": On 3rd May 2013, Justice Yates of the Federal Court of NSW handed down his judgment on the proceedings brought by [NAME] against [NAME] which alleged [[NAME]] [NAME] had breached [NAME] innovation [NAME] for its inground sensor. In [[NAME]] 63 page judgment, which Justice Yates had taken more than six months to consider, it was determined [[NAME]] [NAME]'s product was in breach of the [NAME] [NAME]. It is to be noted [[NAME]] the [NAME] [NAME] expired on the 9th May 2013. It is also to be noted [[NAME]] the final outcome is not yet determined as the matter is before the Court of Appeals currently. Also, to be noted here, there are current proceedings by [NAME] against [NAME] (in the Federal Court of Victoria) pertaining to a breach of [NAME]'s [NAME] which provides [NAME] with exclusive rights in [APPELLANT] to the provision of an integrated sensor-infringement issuing [NAME] solution through the pre-population of data from the sensor to the infringement issuing device. [NAME]'s [NAME] is current until 22nd August 2016. [NAME] and [NAME] are currently in mediation discussions surrounding both matters and appear to be close to a resolution. … 251 [NAME] [NAME] responded to the email on 4 June 2014 and he forwarded the correspondence to other representatives of [NAME] including [NAME] [NAME]. 252 In his first affidavit, [NAME] [NAME] refers to the email dated 4 June 2014 and he states [[NAME]] he does not recall the conversation with [NAME] [[NAME]] referred to in the email or the precise words of the conversation, but he has a recollection of being assured by someone from [NAME] to the effect [[NAME]] was confident of its position and could continue to provide services to [NAME]. [NAME]-examination, [NAME] [[NAME]] accepted as a possibility [[NAME]] during the conversation, [NAME] [[NAME]] had advised him [[NAME]] [NAME] and [NAME] were in dispute in relation to intellectual property rights. [NAME] agreed [[NAME]] he understood at the time he read the email [[NAME]] there had been a determination by this [[NAME]]'s in-ground sensor product was in breach of [NAME]'s [NAME]. [NAME] [NAME] said he did not recall taking any other steps after having been advised of the matters set out in [NAME] [NAME] email. 253 [NAME] [NAME] was asked in [NAME]-examination about the assurance he said he was given by a representative of [NAME] and he said he could not recall precisely who gave him [[NAME]] assurance. [NAME] said [[NAME]] the email from [NAME] [[NAME]] refers to [NAME] and [NAME] being currently in mediation discussions surrounding the legal matters and [[NAME]] they appeared to be close to a resolution and he said [[NAME]] he took [[NAME]] as having the same effect as the matter referred to in his affidavit, [[NAME]] is to say, the assurance. [NAME] agreed [[NAME]] there is no explicit statement in the email [[NAME]] was confident of its position. 254 [NAME] [[NAME]] said in [NAME]-examination [[NAME]] he read [NAME]'s email dated 2 June 2014 carefully when it came in after [NAME] [[NAME]] had forwarded it to him. [NAME] accepted [[NAME]] it would be his understanding [[NAME]] the email was saying [[NAME]] this Court had determined [[NAME]]'s sensor product had infringed [NAME]'s [NAME] and he was aware at [[NAME]] time [[NAME]] [NAME] was using [NAME]'s sensor product. [NAME] agreed [[NAME]] after reading the email, he took no further action himself. 255 [NAME] relies on the terms of [NAME] [[NAME]] email dated 2 June 2014 and submits [[NAME]] it is significant [[NAME]] having read the email, neither [NAME] [[NAME]] nor [NAME] [[NAME]] took any steps or action in response. 256 [NAME] submits [[NAME]] read in its context, the email conveyed the following [NAME]: (1) [[NAME]] [NAME]'s [NAME] had expired; (2) [[NAME]] the dispute between [NAME] and [NAME] had not been finally determined by the Court; (3) [[NAME]] had its own [NAME] and was suing [NAME] for infringement of it; and (4) [[NAME]] the parties appeared to be close to resolving their dispute. [NAME] also relies on the evidence of [NAME] [[NAME]] he was given an assurance by a representative of [[NAME]] was confident of its position and it submits [[NAME]] it is significant [[NAME]] it was not put to [NAME] [[NAME]] or [NAME] [[NAME]] in [NAME]-examination [[NAME]] after reading this email, either of them understood [[NAME]] by using [NAME]'s technology, [NAME] was infringing [NAME]'s [NAME]. 257 In relation to the latter submission, I am prepared to proceed on the basis [[NAME]] both [NAME] and [NAME] [[NAME]] were on notice [[NAME]] it was [NAME]'s case [[NAME]] [NAME] was aware of a risk [[NAME]] it was using a product which infringed [NAME]'s [NAME]. So much was put to [NAME] [NAME] with respect to other events in the chronology, such as the letter dated 1 June 2011, and was an implied or inevitable aspect of the [NAME]-examination of [NAME] [[NAME]]. However, I note [[NAME]] as [NAME] submits and as recorded above, [NAME] [[NAME]] disagreed with such a proposition in relation to the letter dated 1 June 2011. 258 The starting point in assessing the significance of the email dated 4 June 2014, is the evidence of [NAME] [[NAME]] and [NAME] [[NAME]] in [NAME]-examination [[NAME]] they understood at the time they read the email [[NAME]] this Court had determined [[NAME]]'s product infringed [NAME]'s [NAME]. In the case of [NAME] [[NAME]], it was also put to him, and he agreed, [[NAME]] he understood at the time [[NAME]] [NAME] was using [NAME]'s product. The same was put to [NAME] [NAME] when he was [NAME]-examined about the letter dated 1 June 2011. 259 This knowledge of [NAME] [NAME] is significant and places this point in the chronology on a different footing from the earlier events to which I have referred. However, it is still necessary to consider [NAME]'s submission [[NAME]] reading the email in context, it conveyed other matters such [[NAME]] the issue of infringement by [NAME] does not have the significance [NAME] seeks to attribute to it, and [NAME] [COUNSEL] evidence of being given an assurance by a representative of [NAME]. 260 In relation to the first matter, it is not surprising [[NAME]] in an email from a party to its commercial partner conveying advice of an adverse Court determination, the party would seek to highlight other matters favourable to the party and its position. However, [[NAME]] is not the end of the matter and I accept [NAME]'s submission [[NAME]] in this case, the other matters identified rose higher than mere puffery and, in particular, [NAME] was informed [[NAME]] the [NAME] it was determined [NAME]'s product infringed had expired, [[NAME]] an appeal was on foot, [[NAME]] had instituted proceedings against [NAME] alleging infringement of its own [NAME] and [[NAME]] the parties were in mediation discussions surrounding both matters and appeared to be close to a resolution. 261 Although I have no reason to doubt [NAME] [[NAME]] honesty, I do not consider [[NAME]] there is sufficient evidence to support a finding [[NAME]] [NAME] had a conversation with a representative of [NAME] wherein he was assured of [NAME]'s confidence in its position. I infer from [NAME]'s evidence [[NAME]] the content of the conversation was to the same effect as the statement in [NAME]'s email [[NAME]] the parties were in mediation discussions and [[NAME]] he would have regarded the latter as an assurance [[NAME]] the matter was not finalised. This is to be taken into account in the consideration of [NAME]'s claim for additional damages together with the fact [[NAME]] [NAME] was made aware of a determination by this [[NAME]]'s product infringed [NAME]'s [NAME].

2015 262 In approximately the middle of 2015, [NAME] advertised the 2015 Tender for the procurement of [NAME] technologies and services as its contract with [NAME] was due to expire. [NAME] [NAME] was one of the four full voting members on the [NAME] tender [NAME] for the 2015 Tender and in his affidavit, he states [[NAME]] [NAME] received tender responses from [NAME] and [NAME], among others. [NAME]'s tender response is dated 22 September 2015 and in [[NAME]] document, it is recorded [[NAME]] [NAME] is one of [NAME]'s partners in relation to the 2015 Tender. [NAME] [NAME] describes the tender evaluation process and he states [[NAME]], as far as he can recall, no [NAME] or [NAME]-related issues were raised or discussed at any meetings of the [NAME] throughout the 2015 Tender process as far as he can recall, including during the presentation given by [NAME] [[NAME]] on behalf of [NAME]. [NAME] states [[NAME]] eventually, the panel created and signed the tender evaluation report recommending a successful tenderer and [[NAME]] the report ultimately recommended [NAME]. The report is annexed to [NAME] [NAME] affidavit and it is marked to the attention of [NAME] [NAME] and dated 30 October 2015. 263 [NAME] [[NAME]] states in his affidavit [[NAME]] it was his responsibility to prepare the confidential management report to the board of council members on the outcome of the 2015 Tender and the report, dated 15 December 2015, is annexed to [NAME] [NAME] affidavit. 264 On 16 December 2015, [NAME] [[NAME]] sent a letter to [NAME], who at [[NAME]] time was chief executive officer of [NAME]. The letter refers to the First [NAME], a copy of which was enclosed with the letter, and notes [[NAME]] was awarded [NAME]'s [NAME] under which it supplied its [NAME] [NAME] to [NAME] which was utilised by the in-ground sensors installed or procured by [NAME] under the 2011 Contract. In the letter it is alleged [[NAME]]'s [NAME] includes methods and apparatus falling within the scope of claims in the First [NAME] and the letter continues as follows, relevantly:

5. In short the [NAME] has, since approximately July 2011, infringed the [NAME] by using the [NAME] because [[NAME]] [NAME] falls within the scope of the [NAME] claims identified above.

6. As a result of this activity, [NAME] is entitled to be compensated for Council's use of the [NAME] until such time as the in-ground sensors are removed or no longer in use. We understand [[NAME]] this will occur from some time in 2016, consistent with the Invitation to Tender under Contract No. 3534. … 8. Notwithstanding the above, [NAME] is conscious of the significant costs and management time involved in pursuing [NAME] infringement claims in the Federal Court, its business relationships and its obligations to resolve disputes, where possible, before commencing proceedings.

9. With this in mind, it seems to us [[NAME]] a commercial resolution with the [NAME] in relation to past and present infringement of the [NAME] should be actively considered in the interests of all parties. In this regard, we understand [[NAME]] in the 15 December 2015 council meeting a recommendation was made to award the Tender for Contract No. 3534 to a party other than our partner [[NAME]]. Further we assume [[NAME]] no letter of acceptance has yet been issued to the recommended successful tenderer. Accordingly we view this as a good opportunity for the [NAME] to engage in an expeditious settlement negotiation with [NAME] of the [NAME]'s [NAME] infringement claim as set out above, as the current tender could be factored into the negotiations, for example, by part compensating [NAME] for the unauthorised use of its intellectual property since 2011. 265 The 2015 Contract was ultimately awarded by [NAME] to [NAME] and the contract was signed in 2016. 266 In his affidavit, [NAME] states [[NAME]] he sent the letter dated 16 December 2015 because he had become aware [[NAME]] the 2011 Contract was due for renewal and the purpose of the letter was to remind [NAME] of [NAME]'s [NAME]. [NAME] states [[NAME]] in the letter, he set out the reasons why [NAME]'s [NAME] infringed the First [NAME] and he requested a meeting to discuss the issue. 267 [NAME] [NAME] was [NAME]-examined at length about his state of mind at the time of this letter and his purpose in sending it. He agreed [[NAME]] by 15 December 2015, he knew [[NAME]] [NAME] had not been successful in the 2015 Tender and he accepted [[NAME]] was the reason he sent the letter he did on 16 December 2015. It was put to [NAME] [[NAME]] the references in para 9 of the letter to the 2015 Tender were intended by him as a final effort to secure the tender. He said [[NAME]] he did not agree with [[NAME]] suggestion and it was a proposal to factor into a potential settlement and something [[NAME]] could have been considered, but not the objective. [NAME] [NAME] said it was not the sole objective of the letter to win the tender but [[NAME]] "would have been nice". [NAME] agreed [[NAME]] the letter was the first occasion on which he made a demand of [NAME] and he said it was a "reasonable statement" [[NAME]] the reason why he had not previously made a demand of [NAME] was because he did not want to put it "offside" while there was still a possibility of [NAME] securing a contract. 268 [NAME] states [[NAME]] he must have read the letter because it is likely it was the letter which prompted his call to [NAME] [NAME] on 18 December 2015 which he describes in his affidavit. He refers to an internal email to [NAME] [NAME] executive assistant dated 18 December 2015, containing a file note of a conversation he had with [NAME] [[NAME]] over the telephone on [[NAME]] day, at the request of [NAME] [[NAME]]. [NAME] [[NAME]] states he recalls making this file note and while he does not remember the precise words used in the conversation, he can recall [[NAME]] [NAME] said words to the effect [[NAME]] was "using our technology" and [NAME] [[NAME]] states he replied with words to the effect [[NAME]] he "did not believe this to be true". He states he also said words to the effect [[NAME]] [NAME] "should communicate his concerns to [[NAME]]". The file note prepared by [NAME] records [[NAME]] [NAME] indicated he wanted to discuss the possibility of [NAME] coming to a commercial arrangement with [NAME] as it had, in his view, breached [NAME] protocols in using the in-ground sensors and [[NAME]] [NAME] advised [NAME] [[NAME]] [NAME] had not "in any way breached" [NAME] protocols and [[NAME]] he rejected [NAME] [[NAME]] claim and frankly was outraged [[NAME]] [NAME] would think [[NAME]] [NAME] would do such a thing. The file note further records [[NAME]] [NAME] advised [NAME] [[NAME]] [NAME] had received an unqualified offer from [NAME] which had been accepted by it and [[NAME]] he needed to convey his concerns to [NAME]. 269 [NAME] [NAME] also refers to the telephone conversation with [NAME] [[NAME]] in his affidavit and he says [[NAME]] after sending the letter dated 16 December 2015, he received a telephone call from [NAME] [NAME], rejecting [NAME]'s claims set out in the letter. 270 The file note prepared by [NAME] [NAME] in relation to his telephone conversation with [NAME] [NAME] also refers to a telephone conversation [NAME] [NAME] had with [NAME] shortly afterwards. [NAME] [[NAME]] gives evidence about [[NAME]] conversation in his affidavit. [NAME] states [[NAME]] after the call with [NAME] [[NAME]], he spoke with [NAME]'s director, [NAME], and [[NAME]] while he does not recall the precise words used during the conversation, he sought confirmation from [NAME] [NAME] by asking with words to the effect of, "does [[NAME]] have legal rights to use the equipment" to which [NAME] [[NAME]] responded with words to the effect [[NAME]] "it did". [NAME] states [[NAME]] he also recalls asking for further confirmation from [NAME] [NAME] with words to the effect of "are there appropriate indemnification provisions in the submission from [[NAME]] and does [[NAME]] have the necessary approvals to supply all the nominated products?". [NAME] states [[NAME]] he also sought confirmation of [NAME]'s position by asking [NAME] [NAME] with words to the effect of "would [[NAME]] be in breach of [NAME] rights as a consequence of the contract?". [NAME] states [[NAME]] he recalls [NAME] [[NAME]] replied with words to the effect [[NAME]] "yes [[NAME]] has provided indemnification and has the approvals" and "no, [[NAME]] would not breach [NAME] rights". [NAME] states [[NAME]] he recalls forming the view [[NAME]] the dispute was over [NAME] being unsuccessful in relation to the 2015 Tender and as a consequence it did not concern [NAME]. 271 By letter dated 21 December 2015, [NAME] [NAME] responded to [NAME] [[NAME]] letter dated 16 December 2015. In [[NAME]] letter, [NAME] notes [[NAME]], as discussed by telephone, [NAME] rejected the claim [[NAME]] it had infringed [NAME]'s [NAME] by entering into a contract with [NAME] and consequently, it saw no reason to meet to discuss the matter further. [NAME] noted [[NAME]] was contracted by [NAME] to supply [NAME] technologies and suggested [[NAME]] [NAME] contact [NAME] directly to discuss his concerns. 272 Finally, [NAME] [NAME] gave evidence of a telephone conversation he had with [NAME] [NAME] in 2015 or 2016. He received a telephone call from [NAME] [NAME], the director at [NAME], in relation to a [NAME] dispute between [NAME] and [NAME] and this telephone call was the first time he had heard about such dispute between [NAME] and [NAME]. [NAME] states [[NAME]] during the telephone call, [NAME] [[NAME]] said words to the effect of, "I'm just letting you know, there may be a case [[NAME]] hits the media tomorrow, in relation to the sensors [[NAME]] are used by [[NAME]] and [NAME] owned by [NAME]. It has nothing to do with the [NAME], I'm just letting you know." [NAME] states [[NAME]] he asked [NAME], "is there anything [[NAME]] [[NAME]] needs to do?" and [NAME] [[NAME]] responded "no, this is between [NAME] and [[NAME]]". [NAME] states [[NAME]] as a result of this conversation with [NAME] [[NAME]], he formed the view [[NAME]] there was nothing required on the part of [NAME]. He states [[NAME]] he did not specifically recall discussing this telephone call with any members of his team, although he probably did. 273 [NAME] relies on the terms of the letter dated 16 December 2015 from [NAME] [NAME] to [NAME] in full. In relation to [NAME] [[NAME]] conversation with [NAME] [[NAME]], [NAME] submits [[NAME]] the confirmation sought and obtained by [NAME] [[NAME]] had legal rights to use the equipment was no more than a bare assertion and, in relation to [NAME]'s assurance [[NAME]] had provided indemnification and [[NAME]] [NAME] would not breach [NAME] rights, no details or explanations were provided. [NAME] submits [[NAME]] having been told [[NAME]] was indemnifying it, [NAME] clearly decided it could simply continue to use [NAME]'s sensors regardless of them being found to infringe [NAME]'s [NAME] rights. [NAME] relies on the file note prepared by [NAME] [NAME] in relation to his conversation with [NAME] and submits [[NAME]] its dismissive tone takes [NAME] "across the additional damages threshold". 274 [NAME] relies on [NAME] [[NAME]] acceptance under [NAME]-examination [[NAME]] he sent the letter dated 16 December 2015 because [NAME] had been unsuccessful in the 2015 Tender and his agreement with the proposition [[NAME]] [NAME] had not previously made a demand against [NAME] because it did not want to put [NAME] "offside" while there was still a chance of [NAME] securing a contract with [NAME]. In [[NAME]] respect, [NAME] relies on para 9 of the letter dated 16 December 2015. In response, [NAME] submits [[NAME]] such reliance is misplaced because it is the conduct of [NAME], not [NAME], which is relevant for the purposes of the claim for additional damages. 275 In relation to [NAME] [NAME] conversations with [NAME] [NAME] and [NAME] [NAME] and his file note with respect to those conversations, [NAME] submits [[NAME]] the striking thing about those communications is not [[NAME]] [NAME] is dismissive of [NAME] and its claims, but rather [[NAME]] [NAME]'s state of mind at the time was [[NAME]] he believed [[NAME]] [NAME] was not infringing [NAME]'s rights. [NAME] points to the fact [[NAME]] [NAME] was not [NAME]-examined about the letter dated 16 December 2015 or these conversations. [NAME] submits [[NAME]] from December 2015, it was faced with competing positions of [NAME] on the one hand, and [NAME] on the other and, in the circumstances, it was not unreasonable for it to rely on the latter's assurances.

2018/2019 276 The last event in the chronology before [NAME]'s letter of demand on 12 November 2018 was [NAME]'s letter to [NAME] on 21 December 2015. There was a period of almost three years between these two events. 277 On 12 November 2018, [NAME] through its solicitors, sent a letter of demand to [NAME]. The letter enclosed a draft statement of claim and it stated [[NAME]] unless [NAME] confirmed in writing, within 14 days, [[NAME]] it intended to fully compensate [NAME] for [NAME]'s infringing conduct and to otherwise agree to appropriate restraints or measures in respect of ongoing infringement, [NAME] intended to file proceedings without further notice. 278 On 14 February 2019, [NAME] commenced these proceedings. 279 Before addressing the merits of [NAME]'s claim against [NAME] for additional damages, it is necessary to [NAME] a submission by [NAME] about how [NAME] has pleaded its claim for additional damages. [NAME] submits [[NAME]] the relevant paragraph in [NAME]'s ASOC, para 134, contains a number of matters [[NAME]] are pleaded conjunctively and therefore, [NAME]'s case must be [[NAME]] an award of additional damages against [NAME] is warranted because of their combined effect. [NAME] submits [[NAME]] despite the pleading, [NAME]'s closing submissions proceed seemingly unconstrained by the pleadings and on a disjunctive basis. 280 I do not need to determine whether [NAME]'s characterisation of [NAME]'s closing submissions is correct. The decision in [NAME] makes it clear [[NAME]] all the matters in s 122(1A) must be considered and taken into account, even though one matter may ultimately make the critical difference in terms of whether there is an award of additional damages. 281 In considering the matters in s 122(1A), it is convenient to divide the period of alleged infringement into three periods. 282 First, there is the period from about the middle of 2010 to March 2012. [NAME] knew in the middle of 2010 [[NAME]] it was involved in trials of [NAME]'s [NAME] product and [NAME] and [[NAME]] it was a product and [NAME] for detecting vehicle overstay and [[NAME]] it involved in-ground sensors. [NAME] knew [[NAME]] another supplier in the field, [NAME], had heard of these trials and [[NAME]] this had prompted [NAME] to notify [NAME] [[NAME]] [NAME] held a [NAME] in relation to a [NAME] overstay [NAME]/method/[NAME]. [NAME] met with [NAME] in late 2010. [NAME] indicated [[NAME]] it had a [NAME] with respect to its [NAME] or in-ground sensor [NAME] and wished to participate in [NAME]'s new technology trials. In late 2010, [NAME] and [NAME] were involved in a trial by [NAME] of [NAME]'s [NAME] or in-ground sensor [NAME]. [NAME] was aware [[NAME]] [NAME] claimed it had rights under a [NAME] in respect to the [NAME] or in-ground senor [NAME]. [NAME] was aware [[NAME]] [NAME], as part of a [NAME], had made a bid for a contract with [NAME] to begin in 2011 to supply its [NAME] or in-ground sensor [NAME]. The bid by the [NAME] was unsuccessful. [NAME] was successful in securing the contract and commenced supplying its [NAME] product and [NAME] to [NAME]. By mid-2011, [NAME] was aware of the following matters: (1) [NAME] had instituted legal proceedings against [NAME] for [NAME] infringement in relation to [NAME]'s [NAME] product and [NAME]. [NAME] was then using [NAME]'s [NAME] product and [NAME]; (2) the legal proceedings were being defended by [NAME]; (3) [NAME] held its own [NAME] in relation to its own [NAME], or aspects of its own [NAME], and was advised by [[NAME]] attempts by [NAME] to have [[NAME]] [NAME] revoked had been unsuccessful; (4) [NAME] asserted [[NAME]] [NAME]'s actions were motivated, or partly motivated, by [NAME]'s success in the market; and (5) [NAME] would continue to provide its product and [NAME]. 283 [NAME] knew in March 2012 [[NAME]] the legal proceedings between [NAME] and [NAME] included a subpoena issued by [NAME] to [NAME] in order to obtain documents it held in relation to the [NAME]. 284 There is nothing to this point which would provide a basis for an award of additional damages. I am assuming, for present purposes, [[NAME]] conduct outside the limitation period identified in the Act (see s 120(4)) might form the basis, or part of the basis, for an award of additional damages. [NAME] is the customer. It is aware [[NAME]] its supplier is involved in a dispute with a third party and [[NAME]] the dispute has not been finally resolved. As at March 2012, there had been no assertion by [NAME] to [NAME] [[NAME]] the latter had allegedly infringed the [NAME]. I will deal with the issue of benefit shown to have accrued to [NAME] because of the infringement in the context of the next period of time. 285 Secondly, there is the period between March 2012 and 15 December 2015. 286 [NAME] knew in the middle of 2014 [[NAME]] had lost its [NAME] dispute with [NAME]. The latter had established a breach by [NAME] in relation to [NAME]'s product and [NAME] of [NAME]'s [NAME] for its in-ground sensor. [NAME] knew [[NAME]] [NAME]'s [NAME] expired on 9 May 2013 and it knew [[NAME]] was appealing against the decision of the Court. It also knew [[NAME]] had brought legal proceedings against [NAME] for breach of its [NAME] and [[NAME]] [NAME] was said by [NAME] to be current to 22 August 2016. [NAME] was told by [[NAME]] the parties were engaged in mediation and [[NAME]] the matters appeared close to a resolution. 287 Again, I do not consider [[NAME]] there is anything to this point [[NAME]] supports an award of additional damages against [NAME]. Similar factors are relevant as were relevant in relation to the first period. There is still no allegation by [NAME] against [NAME] [[NAME]] the latter is infringing its [NAME]. In terms of benefit accrued to [NAME] because of the infringement, [NAME] points to evidence from [NAME] [[NAME]] the number of vehicles overstaying [NAME] limits had decreased since the introduction of the [NAME] product and [NAME]. I note this submission, but I am not inclined to place a great deal of weight on it in the absence of a detailed costings analysis. 288 The third period is from 16 December 2015 to the commencement of the proceedings on 19 February 2019. [NAME] was aware from 16 December 2015 [[NAME]] [NAME] was asserting the following: (1) [NAME] had since approximately July 2011 infringed the First [NAME] by using [NAME]'s [NAME] and product which fell within the claims in the First [NAME]; (2) [NAME] was entitled to compensation; and (3) [NAME] took the view [[NAME]] commercial negotiations to resolve the dispute between it and [NAME] could factor in the tender [[NAME]] was then being considered by [NAME]. 289 [NAME] had made no previous demand of [NAME] in relation to its use of the [NAME] product and [NAME]. In response, [NAME] asserted to [NAME] [[NAME]] it was not in breach of any of [NAME]'s [NAME] rights. At or about this time, [NAME] was given assurances by [NAME], including as to appropriate indemnification provisions, [[NAME]] had all the necessary legal rights to the [NAME] product and [NAME]. 290 From December 2015, [NAME] was on notice from [NAME] [[NAME]] [NAME] claimed [[NAME]] [NAME] was in breach of its [NAME] rights by its use of the [NAME] product and [NAME]. It decided to proceed and took no action on the basis, in whole or in part, of assurances from the supplier of the alleged infringing product and [NAME]. There is no evidence of any other advice it received at the time, either expert advice or legal advice. 291 I do not consider [[NAME]] the circumstances relating to the third period support an award of additional damages against [NAME]. Whilst it is true [[NAME]] from 16 December 2015, [NAME] was aware [[NAME]] [NAME] was claiming [[NAME]] [NAME] was in breach of [NAME]'s [NAME] rights, [[NAME]] assertion had, if I may put it this way, been a long time coming, was made in the context of a request for [NAME] to revisit the decision made with respect to the 2015 Tender and then was not the [NAME] of any further action or communication by [NAME] until nearly three years later when a letter of demand was sent. I am not suggesting [[NAME]] [NAME]'s inaction is decisive; rather it is a matter of considering [NAME]'s conduct in all the circumstances. 292 In my opinion, [NAME] is not entitled to an award of additional damages against [NAME]. I should say [[NAME]] even if I had reached a contrary conclusion, [[NAME]] conclusion would not extend to the use by [NAME] of [NAME] 3 to the extent [[NAME]] occurred. I have held [[NAME]] the [NAME] of [NAME] 3 is not liable for additional damages in relation to the use or supply of [[NAME]] product. The customer, [NAME], relied on assurances from the [NAME] and I do not think it can be liable for additional damages in relation to the same method, apparatus or [NAME].

The Invalidity Issues

Lack of Best Method, Insufficiency and Lack of Entitlement ([NAME])

The evidence relevant to the first three grounds of alleged invalidity 293 A summary of the first three grounds of alleged invalidity is as follows. [NAME]'s case with respect to [NAME]'s failure to describe the best method known to it of performing the invention is based on the failure to describe in the [NAME] the [NAME]/[NAME] transceiver (the [NAME] transceiver) and an antenna. [NAME]'s case with respect to [NAME]'s failure to describe the invention fully is based on the same matters, although it emphasises in this context the failure to describe in the [NAME] any details of the antenna scheme used by [NAME] and the failure to provide adequate details of the wake-up signal adopted by it. [NAME]'s case with respect to lack of entitlement is based on the contribution of [NAME] [NAME] in relation to the antenna and his own work in testing various transceivers identified by [NAME] [NAME] and in developing a functioning [NAME]. 294 There is one body of evidence which is relevant to the first three grounds of alleged invalidity raised by [NAME] and it is convenient to describe [[NAME]] body of evidence before addressing each individual ground. There are some aspects of the evidence which I will need to describe in more detail when I come to consider the particular issues raised on the facts. 295 The body of evidence consists of the evidence of [NAME] [NAME] and [NAME] [NAME] on behalf of [NAME] and the evidence of [NAME] [NAME] and [NAME] [NAME] on behalf of [NAME]. In addition, a number of documents were tendered by the parties. 296 It is convenient to start with the evidence of [NAME] [NAME] who is the executive director of [NAME] and the named [NAME] in both [NAME]. His evidence was clear and provides a convenient framework in terms of the chronology of events. He was a straightforward witness and I accept his evidence. In cases of conflict, I prefer his evidence to [[NAME]] of [NAME] for reasons I will give. 297 [NAME] [[NAME]] established [COMPANY] ([NAME]) in 1993 and, from 1993 to 2019, [NAME] carried on the business of designing and manufacturing [NAME] meters and paid [NAME] ticket machines primarily for [NAME] and, in some cases, for private car park operators. [NAME] was involved in other projects as well. [NAME] [NAME] is the managing director of [NAME]. 298 In approximately 2000, [NAME] [NAME] started to give consideration to how [NAME] could improve the [NAME] of time-[COMPANY] [NAME]. A couple of years later, [NAME] [NAME] started to develop a [NAME] called the period overstay detection [NAME] or [NAME] or the [NAME]. 299 By approximately August 2003, the major components and sub-[COMPANY] to be implemented in the [NAME] had been identified by [NAME] [[NAME]] and it was at [[NAME]] point [[NAME]] he decided [[NAME]] the development of the [NAME] was at the stage at which it was advantageous to build a prototype VDU and DEV components and sub-[COMPANY]. An element of the [NAME] was the wireless communication of data from the VDU to the [NAME] [NAME] identified a transceiver for the [NAME] which was manufactured by a company called [NAME]. [NAME] [[NAME]] explained his reasons for selecting [[NAME]] transceiver which I do not need to repeat. The use of [[NAME]] transceiver did not proceed because [NAME] considered [[NAME]] it did not operate well in wet conditions. 300 In or about July or August 2003, [NAME] [NAME] identified another transceiver for the VDU. This transceiver was the [NAME] transceiver and it was a product manufactured by a company known as AMI Semiconductor ([NAME]). [NAME] [NAME] was particularly interested in the [NAME] transceiver because it used power saving mechanisms such as a "sniff mode" and a "quick start" oscillator. The [NAME] transceiver was an ultra-high frequency (UHF) transceiver. 301 The [NAME] transceiver was not available through [NAME]'s Australian distributor, [APPELLANT], and in those circumstances, [NAME] [APPELLANT] contacted [NAME] directly for [NAME] about the product. On 13 August 2003, he was advised by [[NAME]] because the [NAME] transceiver had been developed in co-operation with a particular customer, it could only be supplied to "non-competitors". 302 [NAME] said [[NAME]] in order to conserve the battery life of the VDU, the VDU was to operate in a low power mode or "sleep" mode until a DEV came within wireless communication range and sent a RF signal to the VDU communicating with the VDU to "wake up" and transmit data. This mode of operation was adopted to prevent the VDU from remaining active to "listen" for a DEV or to unnecessarily transmit data when there is no DEV in range to receive [[NAME]] data. [NAME] said [[NAME]] he had not, at [[NAME]] point, decided whether the "wake up" signal was to be transmitted on a low frequency (LF) or an UHF. 303 In or about July 2003, [NAME] [NAME] started making inquiries with [NAME] about a low-power LF receiver manufactured by [NAME]. [NAME] supplied electronics components to [NAME]. The [NAME] receiver was called an ATA5283. 304 In or about mid-2003, [NAME] [NAME] was seeking an electronics [NAME] with expertise in RF communications to work on the [NAME] and another project ([NAME]) [[NAME]] [NAME] was developing and, with [[NAME]] in mind, he approached [NAME] [[NAME]] who was a field application [NAME] at [NAME]. The [NAME] involved a RF integrated circuit. [NAME] [[NAME]] said in evidence [[NAME]] [NAME] was a small company with approximately four or five employees at the time and it did not have an electronics [NAME] with expertise in RF communications within the company. [NAME] [NAME] recommended [NAME] [NAME] to [NAME] [NAME] and provided him with [NAME] [NAME] contact details. 305 [NAME] [NAME] contacted [NAME] [NAME] by telephone after 11 August 2003. He has no recollection of the contents of his conversation with [NAME] [NAME]. [NAME] [NAME] met with [NAME] [NAME] on 9 October 2003. His recollection of what they discussed at [[NAME]] meeting is [COMPANY] to the fact [[NAME]] they discussed the RF communication requirements for the [NAME] and the [NAME] and [NAME] [NAME] background and experience in RF [NAME] and antenna design. [NAME] [NAME] recalls being particularly interested in [NAME] [NAME] work on keyless entry and tyre pressure monitoring [COMPANY] [[NAME]] used LF wake-up schemes. 306 At some point during or after his meeting with [NAME] [NAME] on 9 October 2003, [NAME] [NAME] engaged [NAME] [NAME] on behalf of [NAME] as an independent contractor to undertake tasks in relation to both the [NAME] and the [NAME]. He said [[NAME]] he initially engaged [NAME] [[NAME]] to design and match an antenna for the [[NAME]] could operate underground, communicate with a DEV in a car travelling past at over 60 kilometres per hour, have an LF or UHF wake-up scheme and [[NAME]] could fit into a small cylindrical canister containing the VDU. In order to choose between the LF or UHF wake-up scheme, [NAME] [[NAME]] asked [NAME] [[NAME]] to demonstrate the range [[NAME]] could be achieved using the LF receiver. He also engaged him to create the schematic and layout for the printed circuit board ([NAME]) for the VDU. [NAME] explained [[NAME]] the [NAME] was to be installed in the sealed housing of the VDU. The schematic for the [NAME] was required to show the components of the [NAME] and the interconnections between them, including the circuitry for the transceiver, microcontroller, magnetometer and battery. [NAME] explained [[NAME]] laying out the [NAME] involved determining the physical placement of the components and their interconnections. He said [[NAME]] at [[NAME]] time he was aware [[NAME]] there was a specific electronics [NAME] design [NAME] program called "[NAME]" which was used to prepare the types of schematics and layouts which were required. 307 In or about March 2004, [NAME] [NAME] engaged [NAME] [NAME] to design and build a test jig and test specification for the [NAME] of the VDU and in or about April 2004, he engaged [NAME] [NAME] to match and tune the antenna in the DEV and prepare the [NAME] for the DEV. 308 [NAME] [NAME] is unable to recall the precise date [NAME] [[NAME]] commenced work on the [NAME], but said [[NAME]] it was at some point after his meeting with [NAME] [[NAME]] on 9 October 2003. 309 [NAME] was incorporated on 15 December 2003 for the purpose of commercialising the [NAME]. [NAME] [NAME] was issued shares in [NAME] as compensation for his services to [NAME] and [NAME] for his work on the [NAME] and he was paid a lump sum of approximately $20,000. In or around 2004, [NAME] [NAME] was separately remunerated for his work on the [NAME]. 310 On or around 23 December 2003, [NAME] [NAME] was provided with a Share Subscription Agreement, a Confidential Disclosure Deed and an Application Form for the issue of the shares. 311 The Share Subscription Agreement is dated 23 December 2003 and the parties to the agreement are [NAME], [NAME] [NAME], [NAME] [NAME], [NAME] [NAME] [NAME] and a company called [COMPANY]. The Agreement has a number of schedules, including a Confidential Disclosure Deed. [NAME] [NAME] was to receive nine shares in the company for $0 per share with a note to the effect [[NAME]] the consideration for the issue of the shares was the "technical design, documentation and development services [NAME] [NAME] has provided and will continue to provide to [NAME]". The Share Subscription Agreement contains a statement [[NAME]] [NAME] is the first and true [NAME] of the technology being the [NAME] restriction [NAME] invention known as the [NAME] "invented solely by [NAME]". At or about this time, [NAME] entered into a Development, Commercialisation and Supply Agreement with [NAME] for the further development, testing and documentation of the [NAME]. 312 [NAME] [NAME] sets out in his affidavit his best recollection of the work done by [NAME] [NAME] in the period from December 2003 to July 2004. For present purposes, it is sufficient to refer to the following matters. 313 [NAME] [NAME] performed some work on preparing a technical description of the [NAME] for a [NAME] application. 314 On 19 December 2003, [NAME] [NAME] provided to [NAME] [NAME] a number of [NAME]'s (i.e., [NAME]'s) [NAME] sheets about the [NAME] transceiver. A good deal of evidence in this case was directed to the [NAME] contained in these [NAME] sheets. For convenience, I will call them the Data Sheets, although at the same time I note [[NAME]] in the [NAME], some of them are described in other ways such as Application Notes. They are documents produced by the [NAME] of the transceiver, in this case, [NAME]. 315 Between December 2003 and January 2004, [NAME] [NAME], among other tasks, prepared schematics and layouts of the [NAME] for the VDU. [NAME] [[NAME]] explained in his evidence [[NAME]] [NAME] was only working on the RF communications component of the [NAME] for the VDU and [[NAME]] meant [[NAME]] [NAME] prepared the schematics and layouts of the other components of the [NAME] from [NAME] provided by [NAME] [NAME] and other individuals at [NAME] who were working on other elements of the [NAME]. 316 [NAME] said [[NAME]] the [NAME] schematics he received from [NAME] [[NAME]] in January 2004 showed the following matters in relation to the RF components of the [NAME]: (a) [NAME] 1 and [NAME] 2 incorporated the [NAME] ATA5283 LF receiver. The LF receiver was for an LF wake up scheme (which was abandoned). (b) [NAME] 1 and [NAME] 3 included the [NAME] transceiver (433 MHz) and two separate antennas. The [NAME] transceiver was a UHF transceiver, for the transmission of data from the VDU to the DEV. The [NAME] required two separate antennas, one to transmit data and one to receive data. (c) In [NAME] 1, the passive components in the voltage controlled oscillator ("VCO1" and "VCO2"), the Loop Filter ("LP Filter"), the current bias resistor ("CREF") and the crystal oscillator ("X1" and "X2") circuits, elements of the RF communications circuit, were as specified in the [NAME]. Capacitors, resistors and inductors are commonly referred to as "passive components". The values assigned to each of these components were also the same as (in some instances), or very similar to (in others), the values specified in the [NAME]. (d) [NAME] 2 incorporated the [NAME] transceiver (433 MHz) and a single antenna. The [NAME] transceiver was an alternative UHF transceiver, for the transmission of data from the VDU to the DEV. The [NAME] transceiver required only a single antenna, which was used both to transmit and receive data. (e) [NAME] 3 was the same as [NAME] 1, except [[NAME]] the LF receiver had been removed from [NAME] 3, there were two capacitors in the voltage controlled oscillator circuit ("VC01" and "VC02") in [NAME] 3 (C1a and C1) as opposed to only one capacitor in [NAME] 1 (C14) and a capacitor (C15) had been added to [NAME] 3. (para 44 of [NAME] [NAME] affidavit dated 12 March 2021.) In summary, these subparagraphs refer to one [NAME] receiver, the [NAME] transceiver and an [NAME] transceiver. [NAME] is a different supplier from [NAME]. In para 44(c), [NAME] [NAME] identifies components in [NAME] 1 where the components and the values assigned to them are the same or very similar to the Data Sheets. 317 [NAME] [NAME] outlined the work carried out by [NAME] [NAME] in the course of February 2004 and the [NAME] schematics he received from [NAME] in [[NAME]] month. [NAME]'s work included bringing a network analyser and a spectrum analyser to the workshop and using it to test the operation and performance of the [NAME] (transmitting and receiving data) and to tune and match the antenna to the transceiver. [NAME] said [[NAME]] he understood [[NAME]] the tuning and matching of the antenna is reflected by changes to the values assigned to certain passive components of the transceiver circuits. With respect to the [NAME] schematics, [NAME] noted [[NAME]] [NAME] 3 and [NAME] 4 were identical and with respect to [NAME] 5, he said the following: The [NAME] schematics I received from [NAME] [NAME] in February 2004 show the following in relation to the RF components of the [NAME]: (a) … (b) In [NAME] 5 the passive components in the RF receive ("RX1") and RF transmit ("RFOUT" and "REF PWR") circuits now reflected those specified in the [NAME]. The values assigned to these components were also the same (in some instances), or very similar to (in others), those specified in the [NAME]. Test points were also added at various points on [NAME] 5 (royal blue dots labelled "TP"). These test points were used to test the operation of certain components on the [NAME]. (para 47 of [NAME] [[NAME]] affidavit.) 318 [NAME] said [[NAME]] after [NAME] 5 in February 2004, very little changed in the RF components of the [NAME] schematics. He described in a general way the changes which were made. First, there were no changes to the passive components in the transmit, receive and oscillator circuits of the [NAME] and only a handful of changes to their component values. Secondly, there were some minor adjustments to the layout of the [NAME] which [NAME] [NAME] described as design choices required for [NAME] [[NAME]] he directed [NAME] [[NAME]] to make. [NAME] explained [[NAME]] from [NAME] 7 to [NAME] 8, some of the values in the RF related circuits changed, "mostly as a result of further tuning and matching of the antenna by [NAME] [NAME]". 319 [NAME] [NAME] also outlined the work carried out by [NAME] [NAME] in March 2004 to June 2004. It is not necessary for me to set out the details. 320 [NAME] said [[NAME]] the provisional [NAME] application relating to the [NAME] was filed in May 2004. In [[NAME]] same month, the VDU prototype, including the [NAME] for the VDU, was also completed. He said [[NAME]] from around May 2004, the [NAME] of [NAME] [[NAME]] work on the [NAME] was the [NAME] of the [NAME] for the VDU. [NAME] [NAME] also worked on the [NAME] between December 2003 and June 2004. 321 [NAME] [NAME] continued to work periodically on other projects for [NAME] from June 2004 to approximately March 2008. 322 [NAME] said [[NAME]] in February 2005 when the [NAME] in the first manufacturing batch of the [NAME] were being tested and calibrated, there was 40–50% failure rate in relation to the [NAME] transceiver and [[NAME]], as a result, the [NAME] transceiver had to be replaced in all 500 units. [NAME] [[NAME]] expressed the opinion in his evidence [[NAME]] the failures appeared to be a fault in the particular batch of the [NAME] transceiver. It appears from the evidence [[NAME]] there were no problems with the replacement devices and later batches. 323 On 22 November 2004, [NAME] [NAME] sent to [NAME] [NAME] the final [NAME] schematic and layout for the [NAME] of the VDUs. [NAME] said [[NAME]] the [NAME] was a "tidied up" version of the [NAME] [[NAME]] [NAME] produced at or around the time of the first manufacturing run of the circuit board for the VDU. The [NAME] was very similar to [NAME] 8. 324 For the purposes of his evidence in the case, [NAME] [NAME] prepared an annotated version of the [NAME]. In [[NAME]] document, he identified and labelled the main components of the [NAME], being the circuitry for the battery, magnetometer, microcontroller, reset generator, the [NAME] transceiver and the antennas. He also prepared another annotated version of the [NAME] in which he highlighted the components [[NAME]] [NAME] worked on in blue, yellow, green and pink, and the layout and components specified in the Data Sheets highlighted in blue, yellow and green. He identified the following aspects of the [NAME] which were specified in the Data Sheets: (1) the voltage controlled oscillator circuit; (2) the loop filter design; (3) the crystal oscillator circuit; (4) the resistor; (5) the RF receiver circuit; and (6) the RF transmit circuit. 325 As I have said, [NAME] [NAME] work for [NAME] ceased in approximately March 2008. [NAME] said [[NAME]] he stayed in touch with [NAME] [[NAME]] until approximately late 2010, speaking on the telephone and occasionally meeting him for a drink. From in or around early 2011, he did not hear from [NAME] [NAME] and was unaware of what he was doing or where he was working. [NAME] [NAME] sold all of his shares in [NAME] in two tranches in 2009 and 2012 respectively. [NAME] said [[NAME]] at no time since 2003, has [NAME] [[NAME]] raised with him, or, so far as he is aware, anyone else from [NAME] [[NAME]] he ([NAME]) should be named as [NAME] of the First [NAME] or of the [NAME] [NAME], or [[NAME]] he had some entitlement to the First [NAME] or the [NAME] [NAME]. Furthermore, at no time between December 2003 and late 2020, has [NAME] [NAME] raised with [NAME] [NAME], or as far as [NAME] [[NAME]] is aware, with anyone else from [NAME] [[NAME]] he considered himself an [NAME], or [NAME], of the [NAME]. [NAME] [[NAME]] recollection is [[NAME]] [NAME] acknowledged [NAME] [[NAME]] as [NAME] of the [NAME] at all relevant times during [[NAME]] period. 326 [NAME] said [[NAME]] prior to the engagement of [NAME] [[NAME]], neither he nor [NAME] were seeking assistance from [NAME] [NAME] to fix any problem or failure with the in-ground [NAME]. [NAME] explained [[NAME]] [NAME] did not have an [NAME] with RF communications expertise and [[NAME]] he needed someone with this expertise to "build the RF communications component of the [NAME] using components [[NAME]] had already been identified, to test the viability of an LF wake up [NAME] and to create the [NAME] schematic and layout". He said [[NAME]] at the time he first contacted [NAME] [[NAME]], he had already identified a number of components and concepts [[NAME]] were ready to be implemented and built into prototypes and an LF frequency was only being considered for the wake-up scheme. He said [[NAME]] he had identified the [NAME] transceiver from [NAME] before he first contacted [NAME]. 327 The following matters emerged from [NAME] [NAME] [NAME]-examination. In August 2003, [NAME] had decided to build a prototype of two components of the [NAME], being the VDU and the DEV. The intention was [[NAME]] the VDU was to communicate wirelessly with the DEV. For [[NAME]] to occur, it was necessary to build the RF communications component of the [NAME]. [NAME] said [[NAME]] [NAME] required the skills and experience to tune the RF frontend of the two devices. [NAME] confirmed [[NAME]] the component he identifies in para 44(a) of his affidavit is the [NAME] LF receiver, the component he identifies in paras 44(b) and (c) is the [NAME] transceiver and the component he identifies in para 44(d) is an [NAME] transceiver. [NAME] [[NAME]] understanding is [[NAME]] prior to the engagement of [NAME] [[NAME]], nobody at [NAME] had tested the two transceivers and one receiver referred to in para 44 of his affidavit or prepared [NAME] schematics or layouts in relation to the RF components of the [NAME]. He could not recall anybody at [NAME] testing any transceiver other than those referred to in para 44 of his affidavit. He could not recall [NAME] [NAME] testing any transceivers, creating a [NAME] schematic or layout which included any transceiver other than those referred to in para 44 of his affidavit. He did not believe [[NAME]] [NAME] did any work to design and match an antenna for the VDU in relation to any transceiver or receiver other than the three components referred to in para 44. He does not recall [NAME] [NAME] testing any transceiver or receiver other than those referred to in para 44. [NAME] [NAME] could not identify any other devices being considered other than those identified in para 44 of his affidavit after [NAME] [[NAME]] had been engaged. 328 [NAME] [[NAME]] acknowledged [[NAME]] prior to [NAME]'s engagement, no-one at [NAME] had sufficient RF communications expertise to design the RF communications component of the VDU. He agreed [[NAME]] [NAME] needed an electronics [NAME] with RF communications expertise to build the RF communications component responsible for RF communication in the [NAME] and [[NAME]] [NAME] needed [NAME] with [NAME] [[NAME]] experience to design and match an antenna [[NAME]] went with the transceiver [[NAME]] ultimately formed part of the [NAME]. He agreed [[NAME]] initially [NAME] [[NAME]] was engaged by [NAME] to design the antenna for the VDU and to create the schematics and layouts for the [NAME] for use in the VDU. 329 [NAME] agreed [[NAME]] the [NAME] transceiver and the [NAME] transceiver are, for all intents and purposes, the same product or device, save and except [[NAME]] there is a difference in size and, therefore, the footprint is slightly different. 330 [NAME] [NAME] was asked about [NAME] [[NAME]] work to design an antenna for the [[NAME]] tuned and matched the antenna to the [NAME] transceiver. He agreed with the proposition [[NAME]] in order for the [NAME] to transmit and receive data effectively, the antenna associated with the transceiver had to be designed and adapted so [[NAME]] it could effectively communicate with the DEV in circumstances where the transceiver was located underground and the DEV was in a car [[NAME]] might be travelling past at more than 60 kilometres per hour. 331 [NAME] [NAME] was asked a number of questions concerning his opinion as to the advantages of the [NAME] transceiver. He agreed [[NAME]] the [NAME] transceiver had the advantage [[NAME]] the receiver could turn itself on, rather than utilise an external device such as the microcontroller to turn the receiver on. [[NAME]] was because it had its own internal timer [[NAME]] was used to determine the wake-up period and those periods were predetermined. It did not require the external processor to do [[NAME]] and, as the external processor used more power, [[NAME]] meant [[NAME]] there is a power saving. Furthermore, [NAME] agreed [[NAME]] one of the advantages of the [NAME] transceiver was [[NAME]] the period [[NAME]] it is awake and seeking to detect a signal is brief and [[NAME]] has the effect of saving power. 332 [NAME] [[NAME]] was asked about the [NAME]'s assertion [[NAME]] the [NAME] transceiver has a unique quick start component. He agreed [[NAME]] the [NAME] was asserting [[NAME]] there is a time saving and, therefore, a power saving, in [[NAME]] the transmitter and the receiver can both be powered up quickly. He agreed [[NAME]] the [NAME] was asserting [[NAME]] the oscillator used in the transceiver resulted in a meaningful saving in power. He agreed [[NAME]] the quick start oscillator contributes to the power saving capacity of the device. 333 In broad terms, [NAME] agreed [[NAME]] two advantages of the [NAME] transceiver were [[NAME]] it did not stay awake for very long because it did not need to and it did not transmit data when it was unnecessary to do so. 334 [NAME] agreed [[NAME]] the [NAME] transceiver met his objectives and he was particularly interested in it. He agreed [[NAME]] the power saving mechanisms were desirable features of the [NAME] transceiver and those features included the "sniff mode" and the "quick start oscillator". He agreed [[NAME]] he and [NAME] were ultimately satisfied [[NAME]] the [NAME] transceiver "ticked all the boxes as far as a transceiver component in the [NAME] was concerned". 335 [NAME] was unable to say whether a member of the public prepared to satisfy the [NAME]'s commercial terms could obtain the documents relating to the [NAME] transceiver from the [NAME] or an evaluation kit with samples. 336 [NAME] agreed [[NAME]] he would have taken any concern raised by [NAME] [[NAME]] with respect to the use of the [NAME] transceiver very seriously. As it happened, [NAME] [[NAME]] did not raise any concern. 337 [NAME] agreed [[NAME]] the [NAME] transceiver was the lead candidate in the project as far as transceivers were concerned if it did what the [NAME] asserted. 338 [NAME] agreed [[NAME]] properly considered, there were two candidates for the transceiver — the [NAME] transceiver and the [NAME] transceiver — and [[NAME]] the [NAME] transceiver was the better candidate. 339 [NAME] agreed [[NAME]] the [NAME] transceiver was used in almost all of the test [NAME] and was used in the production [NAME]. He agreed [[NAME]] the [NAME] transceiver was used in the Maribyrnong field trials in March 2005 and in relation to the tender to Maribyrnong after the field trials. 340 [NAME] agreed [[NAME]] the [NAME] transceiver was the best transceiver known to him and [NAME] for use in the communications component of the [NAME]. 341 I turn now to the evidence of [NAME] [NAME]. The circumstances in which [NAME] [NAME] came to give his evidence-in-chief were unusual. They are identified in my reasons in [COMPANY] v [APPELLANT] [NAME] [APPELLANT] (No 6) [2020] FCA 1866. In the course of those reasons, I said the following (at [47] and [48]): 47 [NAME] [[NAME]] was examined by [NAME] on 25 November 2020. [[NAME]] came about in the following circumstances. [NAME] claimed [[NAME]] [NAME] had [NAME] relevant to their existing pleas of insufficiency and lack of best method. He would not speak to [NAME] because of the confidentiality obligations he owed to [NAME]. He could be subpoenaed to attend at trial, but [[NAME]] had the potential to disrupt the trial because the parties will not have advance notice of what he is going to say as it will be the case with other witnesses who have either provided affidavits or will do so. 48 On 13 November 2020, the Court made the following [APPELLANT], relevantly: 1 Pursuant to sections 23, 37P(2) and (3) of the Federal Court of [APPELLANT] 1976 (Cth) (the Act) [NAME] [COUNSEL] be deposed on oath or affirmation by counsel for the First [NAME] before Justice Besanko on 25 November 2020 at 10.30 am (AEDT) (Oral Examination). 2 The First [NAME] be granted leave to, and must, issue to [NAME] [[NAME]] a subpoena to attend to give evidence for the purposes of Order 1 above, returnable on the date specified in Order 1 above. 3 At the Oral Examination, there be no [NAME]-examination. 4 The evidence at the Oral Examination be recorded in a transcript in accordance with the usual processes of the Federal Court of [APPELLANT]. 5 Objections to evidence be permitted to be made by the Applicant and recorded on the transcript, and determined by the Court as it deems fit. 6 The transcript of the Oral Examination may be tendered at the hearing in this proceeding in March 2021, [NAME] to: (a) [NAME] [NAME] being available for [NAME]-examination if required by the Applicant; (b) any rulings as to objections made by Justice Besanko; and (c) appropriate confidentiality [APPELLANT] being made over [NAME] contained in the transcript. 342 The material which was produced at or following [NAME] [NAME] examination on 25 November 2020 was a transcript of his evidence and a small number of documents, the most significant of which were as follows: (1) [NAME] [NAME] handwritten notes of tests carried out by him and calculations he made ([NAME] [NAME] handwritten notes); (2) Data Sheets for "[NAME]-53000 Frequency Agile Transceiver" dated February 2006; and (3) [NAME] [NAME] curriculum vitae. 343 The transcript of [NAME] [NAME] examination was intended to serve the same purpose as an affidavit before trial. 344 [NAME] raised a general objection to the tender of the transcript and other documents by [NAME] at the trial. The basis of the objection was [[NAME]] the transcript of [NAME] [[NAME]] evidence and the other documents were so confusing and unclear, [[NAME]] it would create substantial prejudice to [NAME] if they were admitted. The transcript and other documents were said to fall a long way short of the equivalent of an affidavit before trial. 345 I heard submissions on the objection and overruled it. Having said [[NAME]], there was a good deal of force in the objection. [NAME] identified three areas in which [NAME] [NAME] evidence was confusing and unclear and they are as follows: (1) [NAME] [NAME] evidence about when various events occurred; (2) [NAME] [NAME] identification of what he states are relevant documents; and (3) the tests and calculations in [NAME] [NAME] handwritten notes. As I will make clear, a number of these problems endure and affect the weight I am prepared to put on [NAME] [NAME] evidence. Nevertheless, I was not satisfied the problems were of such magnitude [[NAME]] I should rule [[NAME]] the whole of [NAME] [[NAME]] evidence was inadmissible, particularly having regard to the circumstances in which it was adduced by [NAME]. It is worth recording at this point, for reasons which will become clear, [[NAME]]'s counsel said in the course of submissions with respect to the objection [[NAME]] [NAME]'s evidence was important with respect to two issues and counsel identified those issues as his work in relation to the antenna and his work in relation to identifying the appropriate transceiver. 346 [NAME] submitted, in the alternative to its general objection, [[NAME]] various parts of the transcript and accompanying documents were inadmissible or should be the [NAME] of limitations as to use under s 136 of the Evidence Act 1995 (Cth). My rulings as to those matters are set out in the transcript. 347 I am not prepared to place any significant weight on [NAME] [NAME] evidence. I do not suggest any dishonesty on his part, but his recollection of events was generally poor and unreliable and his evidence of what he did relevant to the invalidity grounds was vague and non-specific and, therefore, difficult to follow. His self-assessment of the importance and value of his work was unreliable. His combativeness on the first day he was [NAME]-examined was puzzling. 348 [NAME] [NAME] dealt with one additional topic in examination-in-chief at the trial. He conceded [[NAME]] his reference at his examination on 25 November 2020 to the [NAME] 53000 frequency agile transceiver was a mistake and the reference should have been to the [NAME] or the [NAME] transceiver. He said [[NAME]], in his opinion, the [NAME] transceiver and the [NAME] transceiver are essentially the same device. It would seem [[NAME]] the [NAME] 53000 transceiver was a later device manufactured and supplied by [NAME]. 349 [NAME] [NAME] gave evidence of the work he did in relation to the antenna for the transceiver. His evidence of the work and his assessment of its nature and value included the following: (1) the antenna was his design and it was innovative; (2) the purpose of the antenna is, among other things, to receive all signals which are transmitted; (3) using equipment such as sophisticated spectrum analysers, network analysers and a numerical package, he was able to "conformally map" the performance of the antenna which he explained as a matching process between the performance of an antenna out of the ground with an antenna in the ground. He said [[NAME]] he took a series of measurements, processed them and then translated them to component values into a printed circuit. [[NAME]] resulted in an indication of performance. The conformal mapping exercise was carried out over three to four months; (4) the antenna was substantially smaller than would normally be used and so it was necessary to apply "certain principles" to make it "behave as a larger geometry". He referred to a "very specific method or [NAME] approach to create what appears as a larger geometry". In [NAME]-examination, [NAME] [NAME] appeared to describe a two stage process of reduction from one metre to 25 centimetres and then a further reduction from [[NAME]] size to the size of the antenna on the [NAME]; (5) he designed, he said, the electronic hardware, the RF components and "all of those parts [[NAME]] went into the board". (6) the work he performed was innovative and he explained [[NAME]] assertion in the following way: So the antenna design was innovative, and I will say [[NAME]] on the basis [[NAME]] the ground needed to be matched. So there were aspects of the antenna designed where I used sophisticated spectrum analysers, network analysers and what is known as a numerical package to simulate the design and self-serenade. Using these tools, I was able to conformally map – ie – the performance of the antenna out of the ground to match what was required in ground. So the surroundings – as a child, you go up onto the roof and [NAME] adjusts the TV antenna. And as he adjusts it, it's perfect. He lets it go; the signal varies. It's the same thing for the in-ground transmitter antenna. It needed to be matched so [[NAME]] it was perfectly in tune with its environment. I did this by taking a series of measurements, mathematically processing them and then translating them to component values onto the printed circuit board, which gave us the performance. This evidence was received as evidence of what was done, not as evidence [[NAME]] it was innovative. A little later, [NAME] [[NAME]] returned to conformal mapping and why he described his work as innovative: And why did you regard it as innovative?---Because it called upon some work [[NAME]] I had gained understanding in from [NAME]. And [[NAME]] is to conformally map a particular type of area to another area. So it called upon me to translate things from air to things in the bitumen. So the bitumen surrounding has specific artefacts [[NAME]] will shift the frequency of the antenna. And in order to adjust for [[NAME]] shift, you have to compensate for it. There is this compensation [[NAME]] is – I would describe – quite innovative. (7) work was performed with a block of tar or road material with a hole in it. [NAME] [NAME] had removed a portion of the road surface and provided it to [NAME] so [[NAME]] he could match the antenna; and (8) in explaining what he meant by tuning the geometry within the [NAME] range, [NAME] said [[NAME]] he would be looking for a centred or slightly offset tuning range, so [[NAME]] he could actually make sure the [NAME] has the ability to fully compensate for temperature and antenna variations. 350 Two matters involving what were said to be techniques applied by [NAME] [NAME] were emphasised by [NAME]. They involve the conformal mapping referred to by [NAME] [NAME] and the process whereby the size of the antenna is reduced so [[NAME]] it fits on the [NAME]. Some details of the technique [NAME] [NAME] described as "conformal mapping" were explained by [NAME] [NAME], but just how it was innovative or involved complexity was never explained. No details of the "technique" used to make the final reduction in the size of the antenna so [[NAME]] it fitted onto a [NAME] were provided. I will return to this evidence, and the observations I have made with respect to it, later in these reasons. 351 Page 36 of [NAME] [NAME] handwritten notes, among others, was said by [NAME] [NAME] to show the transponder and the tar block. There is a spectrum analyser with an antenna approximately one metre from the transponder in the ground and [NAME] [NAME] said: … we were able to measure the transmitted hour [sic] by changing the antenna components. 352 [NAME] [NAME] described the work which is shown on p 38 of the handwritten notes and then on pp 35, 36 and 40 as follows: Now in order to make those measurements the same, I – I had to perform some – the idea is to create the antenna [[NAME]] behaves the same or has the same performance in the tar block as it does in air. So, in order to use [[NAME]] I had to use a calibrated cable from my network analyser and measure the impedance of the antenna in the ground. And [[NAME]] final circuit value or one of the final circuit values is reflected on page 40. And the circuit values – is this right – reflect what – a specification for the circuit which will produce the required outcome for the antenna?---Correct. [[NAME]]'s right. There's one other component to consider with this and [[NAME]] is these components have a tolerance. You will have one value and it will have a variation of [[NAME]] value. [[NAME]] variation is seen in production in high volume. So there – I would have actually looked for other values but [[NAME]] – [[NAME]] – to the best of my recollection, [[NAME]] was the antenna geometry and values of capacitors [[NAME]] I remember having. And so you've referred us to pages, I think, 35, 36, 38 and 40?---Yes. The balance of the pages consist of what as a general description?---Further refinement of the testing and analysis. So there's an aspect for component variations and there's an aspect to evaluate what those variations will look like over a production. 353 [NAME] [NAME] said the Data Sheets which he produced for [NAME] 53000 frequency agile transceiver described the transceiver which was used in the installation for the Maribyrnong Council and [[NAME]] it was the "Holy Grail" for [NAME] [[NAME]] [NAME] overstay [NAME] and [[NAME]] it met all of his requirements. As I have previously said, [[NAME]] reference is not a reference to the correct component. [NAME] [NAME] described the [NAME] transceiver as an "incredible part" and a "good find" because it included sniffing or polling and waking up on received strength indicator. [NAME] said [[NAME]] he provided [NAME] to [NAME] [[NAME]] as to the requirements of a desirable part and [NAME] [[NAME]] went off and found the part [[NAME]] matched the requirements, "[[NAME]] we had identified". 354 A number of issues were clarified in [NAME] [NAME] [NAME]-examination. 355 First, [NAME] [NAME] was asked about his view concerning the identity of [NAME] of the invention. In the Share Subscription Agreement which [NAME] [[NAME]] executed, it is made clear [[NAME]] [NAME] is the first and true [NAME] of the technology and [[NAME]] he is the sole [NAME] of the technology. The technology is described as the [NAME] restriction [NAME] invention known as the [NAME]. [NAME] [NAME] was asked about inventorship in the context of questions he was asked in [NAME]-examination which suggested to him [[NAME]] he was giving evidence in order to advance his own claims. [NAME] [NAME] was asked the questions in the context of the annotated schematic of the [NAME] prepared by [NAME] [NAME] and attached to [NAME] [NAME] affidavit. This is the schematic which has been annotated by [NAME] [NAME] by reference to the Data Sheets. In the context of [[NAME]] schematic, [NAME] said [[NAME]] this was his work and [[NAME]] he claimed his work. He did not deny [NAME] [[NAME]] claim to be the true [NAME] of the [NAME]. He drew upon an analogy of the wheel not being the car. Later in his [NAME]-examination, he agreed [[NAME]] [NAME] was the one true [NAME] of the [NAME] as was specified in the agreement and [[NAME]] there was no argument from him [[NAME]] it was a novel and inventive concept. He said [[NAME]] he was not arguing about the identity of [NAME]. 356 Secondly, [NAME] [NAME] was asked about [NAME] [NAME] opinion as to the schematic of the [NAME] which he ([NAME] [NAME]) had annotated. [NAME] [[NAME]] was asked whether he agreed [[NAME]] the components in boxes outlined in red were derived directly from the [NAME]. He said [[NAME]] the topologies were very similar. He was asked whether he would be surprised if they were identical. In answer, he said [[NAME]] it is the component values [[NAME]] are salient in this regard. [NAME] [[NAME]] was asked to elaborate on this comment in re-examination. As far as his evidence may be understood, his elaboration was [[NAME]] the [NAME]'s specifications were only a starting point and the tolerance of the capacitors and the technology of the capacitors and the possibility of stray capacitants is critical. He said [[NAME]] topology is what the circuit needs to see and the values are what must be selected for a particular application. 357 Thirdly, [NAME] [NAME] was asked about the work he did on the antenna. [NAME] agreed [[NAME]] the idea of having an antenna on a [NAME] was well known in the [NAME] in late 2003 and early 2004. [NAME] [[NAME]] did not agree with the proposition [[NAME]], as a general rule in the case of antennas, "bigger is better". He said [[NAME]] antennas operate at a specific wavelength proportional to the frequency of transmission. [NAME] [NAME] referred to specific techniques for reducing antenna size. [NAME] [NAME] said in answer to a question as to whether it was a routine decision to use a printed antenna on a [NAME] of small dimensions [[NAME]] is going to be placed into a self-contained underground unit, [[NAME]] in fact it was a compelled decision. It was put to him [[NAME]] it was also a matter of compulsion to use two antennas. He did not agree with this suggestion and he referred to an in-vehicle D unit where only one antenna was used because there was an RF switch which enabled the [NAME] to switch between transmit and receive. He agreed [[NAME]] if not compelled, then the use of two antennas is entirely in accordance with the [NAME] transceiver. [NAME] [NAME] was asked in re-examination about the technique for reducing antenna size. His answer did not seem to [NAME] [[NAME]] topic, but related to the "technique" of conformal mapping. He said [[NAME]] this technique was designed to compensate for, by way of example, the artefact of the tar seal, in the case of an in-ground unit. He said the technique was conformal mapping and [[NAME]] it was not a standard technique and it is not documented in any of the documents produced in evidence. He said [[NAME]] free space is measured. Then, the impact of the in-ground unit is measured, and … we compensate or we map the complex impedance from free space to ground through adjustment of the component values. 358 He referred to the technique as a very specific one and he referred to it in the context of the test he performed with the piece of tar or road material. He then said this: … So we would tune it for one frequency, knowing [[NAME]] it would be out, and then by the time we had inserted the key fob into the tar seal, it would be on channel. 359 Fourthly, and related to the third matter, [NAME] [NAME] was asked about the work he did on the piece of tar seal. He said [[NAME]] he took a piece of tar seal, analysed the influence of the tar seal which is capacitive and then matched the antenna and tuned it for the tar seal and the correct frequency. He said [[NAME]] he believed [[NAME]] while the [NAME] claims the [NAME] is new and novel, so too are the antennas [[NAME]] were developed to put a sensor in the ground. [NAME] [NAME] undertook testing of a circuit board, both in the air and under tar. He said [[NAME]] [NAME] had gone out and cut up a piece of road so [[NAME]] he had a block of equivalent material to road tar [[NAME]] was available to him in which to place the unit. [NAME] said [[NAME]] he asked [NAME] to obtain a piece of road [[NAME]] was at least quarter wavelength square. Some tests were done on the benchtop and others were done in the tar block. [NAME] said [[NAME]] he used a network analyser and a spectrum analyser. As I have said, in re-examination [NAME] [NAME] again explained the technique which he adopted. He said [[NAME]] he had developed it at [NAME] [APPELLANT] [COMPANY] ([NAME]) and [[NAME]] it involved taking the piece of tar seal provided to him by [NAME] [NAME] and analysing the influence of the tar seal which was capacitive. He then matched the antenna and tuned it. He said [[NAME]] what he was examining was the influence of the tar seal on the tuned resonant circuit. He calculated the amount of pull or shift the tar seal had had on the frequency and then he adjusted in the complex plane with his simulator doing some sums. He then adjusted [[NAME]] value, compensating for the tar seal back to the resonant circuit values. 360 Finally, [NAME] [NAME] was asked about the features capacity of the [NAME] [NAME]. [NAME] [NAME] described the benefit of [NAME] [NAME] as allowing an integrated electrical design at schematic capture to be "completely validated". He said [[NAME]] this meant [[NAME]] [NAME] could set up a series of electrical rules [[NAME]] validate inputs to outputs and outputs to inputs and passive components. He did not agree [[NAME]] the [NAME] [NAME] enabled the designer to drag and drop components from a library of components into a schematic and [[NAME]] the [NAME] resulted in significant automation of a total map of circuit layout. He said [[NAME]] in sensitive layouts, all components are placed by hand. He said [[NAME]] in terms of layout for digital techniques, there is a lot of technology associated with the collection of transmission lines, the distance of the [NAME], the substrates used, the dielectric constants and it is not the case [[NAME]] it is an automatic process of "just shaking a box and hoping the bits will fall into place". He did not agree with the proposition [[NAME]] with the use of the [NAME] [NAME], the designer dragged and dropped the components into place using [NAME] and [[NAME]] was an automated process thereafter. [NAME] [[NAME]] had [NAME] [NAME] on his computer when he was working with [NAME] [NAME]. 361 As I have said, I found [NAME] [NAME] recollection of events to be generally poor and unreliable. The following are examples of this, although clearly they are not all of equal significance. 362 First, [NAME] [NAME] initial recollection of when he first did work for [NAME] [NAME] was "Circa 2001" when, in fact, it was in the [NAME] half of 2003. 363 Secondly, [NAME] [NAME] initially produced the Data Sheets for the wrong [NAME] device. 364 Thirdly, it became clear in [NAME]-examination [[NAME]] [NAME] made a number of errors in the curriculum vitae he produced in connection with his examination on 25 November 2020. It quickly became apparent [[NAME]] document contained numerous errors in terms of the periods of his employment with various employers. One error as to the dates of his employment by a particular employer was substantially wrong in circumstances in which he had used the location of [[NAME]] employment to identify the place where he had dinner with [NAME] [[NAME]]. In fairness, he did correct [[NAME]] evidence later. I will not describe further these aspects of his [NAME]-examination. It is sufficient for me to record [[NAME]] [NAME] was unable to explain the reasons for the errors in his curriculum vitae other than by conduct which can only be characterised as careless. Furthermore, I found [[NAME]] even some of his evidence correcting the dates was initially confusing. 365 Fourthly, and it seems to me [[NAME]] this is a significant error, [NAME] [[NAME]] evidence is wrong when he said he had a conversation with [NAME] [NAME] and [NAME] [NAME] went off and found the [NAME] transceiver. [NAME] [[NAME]] said, or at least implied, [[NAME]] he specified a number of requirements and [NAME] [[NAME]] went off with those requirements in mind and found the [NAME] transceiver. [NAME] found the [NAME] transceiver before he met [NAME] and [NAME] did not suggest the contrary in its closing submissions. 366 Fifthly, the most benevolent construction of [NAME] [NAME] evidence on the first day he was [NAME]-examined about his recollection of the contents of his first telephone conversation with [NAME] was [[NAME]] it proceeded the way it did because he recognised he had no genuine recollection of [[NAME]] conversation. 367 As I have said, I find it difficult on the evidence [NAME] [NAME] gave to assess the nature and extent of the work he did in fixing the values for the antenna [NAME] and in reducing the size of the antenna so [[NAME]] it fitted on the [NAME]. 368 Other aspects of [NAME]'s evidence [[NAME]] I take into account are the fact [[NAME]] he fenced with the [NAME]-examiner as to whether he knew a [NAME] "[[NAME]]" [NAME] and [[NAME]] he did, from time to time, provide lengthy and apparently unresponsive answers. The answer he gave in re-examination when asked about techniques for reducing antenna size is as good an example of this as any other example. 369 I turn now to the evidence of [NAME] [NAME] and [NAME] [NAME]. [NAME] [NAME] and [NAME] [NAME] were asked to identify in the [NAME] any points of agreement or disagreement between them regarding whether further [NAME] is required for the [NAME] person reading the First [NAME] and the [NAME] [NAME] to understand or [NAME] certain matters. 370 The first matter is the identification of the appropriate antenna and any other hardware or [NAME] to communicate data from the [NAME]. The [NAME] agreed [[NAME]] the development of an antenna can be complex. They disagreed as to whether the level of [NAME] disclosed in the [NAME] is sufficient for someone [NAME] in the art to implement an antenna suitable for the application. [NAME] said [[NAME]] compact antenna designs for operating at the disclosed frequencies were well known and reliably used in a number of applications in 2004. Many of these applications would require radio operation across solid barriers such as walls. A thin layer of road material would present a similar design challenge to transmitting radio signals through such solid barriers. 371 [NAME] [[NAME]], on the other hand, said [[NAME]] some research was required to confirm the best antenna type, configuration, power level and mechanical mounting e.g., plastic lid with antenna underneath. In his opinion, a poorly considered approach may waste significant battery power or have poor operating characteristics in terms of range or blackspots or both. Weather such as water on the ground and snow can cause problems and considerable variation in performance. A robust design would not simply fall into place based on the [NAME] in the First [NAME], even for a typically [NAME] person. 372 [NAME] [[NAME]] said in his oral evidence [[NAME]] in 2004, there would have been 20 to 30 options in terms of available transceivers. In relation to transceiver chips in 2004 available for any purpose, such transceivers would have a connection either for an antenna circuit which terminates in an antenna, or connections for an antenna. There would be provision for two antennas, one to receive and one to transmit, although sometimes they would be combined into a single antenna and [[NAME]] was an option in 2004. He said [[NAME]] there would either be a single antenna which both transmits and receives, or a separate antenna for each process. The [NAME] of chips would leave it up to the [NAME] to select an appropriate antenna and typically, they would provide some recommendations as well. [NAME] agreed [[NAME]] in 2004, one well-known solution, if a designer was working with a transceiver on a circuit board, was to have a loop antenna printed on the circuit board. Such configurations were in widespread use in 2004. 373 [NAME] agreed [[NAME]] as at the relevant date, his choice of a suitable antenna for implementing the invention would be a compact antenna, [[NAME]] is, either a helical or loop antenna. In the case of a small self-contained unit, a circuit board with a printed antenna was a very common solution. [NAME] [NAME] said: "Not exclusively, but yes. A common solution". He agreed [[NAME]] within limits in the case of the printed antenna solution, a general rule of thumb [[NAME]] could be followed was [[NAME]] the area enclosed by the antenna loop would be as large as possible. He added the caveat [[NAME]] he is not an antenna designer. He agreed [[NAME]] in the case of a printed loop antenna on a circuit board, it would need to be matched to the antenna circuit [[NAME]] was part of the transceiver chip. [NAME] would provide [NAME] [[NAME]] would enable the matching process to be "kicked off". [NAME] [[NAME]] explained in his oral evidence the matters [[NAME]] would need to be taken into account in order for two devices to communicate with each other. In the case of a device one centimetre below the road surface, it would be necessary to conduct tests which mimic the circumstances as far as possible. One approach was to use a tar block with a hole in it, although [NAME] [[NAME]] did not accept [[NAME]] approach appropriately mimicked the circumstances. [NAME] agreed [[NAME]] if [[NAME]] was an approach adopted, then it would be a process of trial and error to find the proper setting. 374 [NAME] [NAME] said in his oral evidence in the context of a discussion about barriers between an antenna and the air, [[NAME]], in his opinion, there was always a solution for this application. He said: [NAME]: It's – it's difficult to go back to 2004. In 2004, myself, I was actively involved in – in creating small handheld devices for communicating – keyless entry [COMPANY], garage door openers, collision-avoidance [COMPANY] – and we used for those a range of antennas. Sometimes it's just a single piece of wire of a certain length. Sometimes it was loop antenna, sometimes it was little – just a coiled piece of wire, but in all cases there was no difficulty creating the circuit and/or tuning the circuit. 375 The key point [NAME] made was [[NAME]] in 2004, the interference caused by the fact the unit was buried in the road presented a challenge no different from other commercial applications operating at the relevant frequencies and he gave the examples of keyless entry [COMPANY] for cars and buildings, including garage doors, remote alarm [NAME] activation devices, Wi-Fi and Bluetooth. 376 [NAME] [[NAME]] referred to [NAME]'s evidence [[NAME]] the [NAME] do not mention the type of antenna which is used and [[NAME]] antenna design is a complex area [[NAME]] is typically solved through a process of experimentation to design the optimal [NAME] and said [[NAME]] he did not agree [[NAME]] the choice or design of a suitable antenna to implement the invention disclosed in the [NAME] would be complex. In his evidence, he said the following: As at May 2004, if I was choosing a suitable antenna to implement the invention disclosed in the [NAME], I would have chosen a "compact antenna", either a helical antenna or loop antenna. The antenna must match the driver of the transceiver. [NAME] on how to match an antenna to a particular transceiver is typically provided by the [NAME] of the transceiver. Therefore, once I had selected the antenna type and transceiver for the [NAME], I would have known [[NAME]] the [NAME] would provide the [NAME] I needed to match the antenna to the transceiver. This would have been a straightforward and routine process. 377 This was a point upon which [NAME] [NAME] and [NAME] [[NAME]] disagreed. It was put to [NAME] [[NAME]] in terms of testing, he would put his device in something [[NAME]] approximated the conditions of being on the road and take the device through various settings and see which one was the best. [NAME] agreed [[NAME]] is how one would proceed, but went on to say: … And to your point of approximating or mimicking the environment, you could imagine the variables involved with different road surfaces and materials, it can be quite an elaborate exercise. 378 [NAME] [NAME] was taken to the Data Sheets and taken through the Key Features and Product Description. He was asked about the quick start oscillator. [NAME] agreed [[NAME]] if the receiver is on for 2.5 milliseconds and off for 2.5 milliseconds, the start-up time for the [NAME] receiver, its 50 microseconds would be 0.05 milliseconds. [NAME] agreed [[NAME]] in the example given, there is a meaningful saving in power. He agreed [[NAME]] the [NAME] was asserting in the [[NAME]] there is a meaningful saving in power in using the quick start oscillator in comparison with other devices. 379 [NAME] agreed [[NAME]] the receiver in the [NAME] transceiver is woken up by its own internal timer which turns the receiver on at predetermined intervals. [NAME] [NAME] characterised the transceiver as semi-intelligent. He would characterise a Bluetooth receiver as super-intelligent. He agreed the [NAME] transceiver is not a simple transceiver. He agreed [[NAME]] because the [NAME] transceiver is able to wake itself up using its own internal timer, it does not require an external microcontroller or microprocessor to wake up the receiver and [[NAME]] this gives rise to a saving in power because the microcontroller consumes more power than the component in the receiver which is waking it up. He did say [[NAME]] a proper comparison could only be made if it is known what microprocessor is being used because, he observed, there are some extremely low power microprocessors. He said [[NAME]] one needed to look at the [NAME] as a whole to make such comparisons. 380 [NAME] agreed [[NAME]] one of the attractive features of the [NAME] transceiver is [[NAME]] the transceiver could wake the receiver up to listen for incoming signals and it did not unnecessarily use extra power [[NAME]] would otherwise be required if the microcontroller woke the receiver up. He agreed [[NAME]] if the receiver can be woken up more quickly and it is able to turn itself off and wait for another predetermined signal, there is a saving in power consumption. 381 [NAME] agreed [[NAME]] in addition to selecting a transceiver, it would be necessary for the designer to design an antenna [[NAME]] matched the transceiver. He agreed [[NAME]] there were no statements in the [NAME] describing a particular antenna type, or a particular antenna configuration, or a particular power level [[NAME]] might apply to the antenna. 382 [NAME] agreed [[NAME]] it is important to match the outputting impedance of the transceiver chip with the impedance of the transmit antenna and associated networks. [NAME] [NAME] described "impedance" in its simplest terms to mean resistance to the flow of electricity. He agreed [[NAME]] if there is a proper matching, the maximum level of the RF signal output by the transceiver is transmitted out of the antenna. If there is not a proper match, a portion of the transmitted signal does not go to the antenna. The same need to match applies to the input impedance of the transceiver chip and the impedance of the receive antenna and its associated network of components. If [[NAME]] is not done, then the received signal strength indicator (RSSI) threshold of the sniff mode in the [NAME] transceiver will not function effectively. 383 [NAME] agreed [[NAME]] the designer of the [NAME] trying to match the output and input impedances of the transceiver with the impedance of the transmit and receive antennas must take account of manufacturing and temperature tolerances. There may be a variance between theoretical and actual impedances. 384 The trim function of the [NAME] transceiver which is designed to account for any variations due to manufacturing tolerances is an important feature of the device. It means [[NAME]] the designer can optimally match the circuitry of the transceiver with the antenna circuitry. [NAME] said [[NAME]] optimal matching of the circuitry and the antenna is not one value and [[NAME]] is shown by the fact [[NAME]] most transceivers do not have or use a trim function. [NAME] considered [[NAME]] the trim function was an advantageous feature, but not an absolutely necessary feature of transceiver chips. The trim function allows the designer to use components of a wider tolerance and possibly cheaper components and then fine tune the [NAME] at the end. [NAME] said [[NAME]] in an ideal world, the designer would not need the trim function. 385 [NAME] [NAME] considered the following features to be advantages of the [NAME] device: (1) the [NAME] transceiver wakes itself up independently of the external microcontroller and [[NAME]] leads to a very low power mode of operation; (2) the [NAME] transceiver's utilisation of the RSSI threshold is advantageous because it means [[NAME]] it is not woken up repeatedly from very low signals and again, this means [[NAME]] it uses less power; (3) the quick start oscillator of the [NAME] transceiver is an advantageous feature because the faster the radio stabilisers, the faster the RSSI can be measured and the radio put back to sleep. This results in a reduction in the use of power; and (4) the trim function of the [NAME] transceiver is advantageous because you can use cheaper products and adjust and trim to suit the circumstances. 386 [NAME] [NAME] was taken to the [NAME] data sheet for the [NAME] device (the [NAME] transceiver). This is the device referred to by way of example in the specification of both [NAME]. The Data Sheet is dated March 2003 and it describes a transceiver. [NAME] agreed [[NAME]] the [NAME] transceiver had a much shorter start up time than the [NAME] transceiver. He agreed [[NAME]] the [NAME] transceiver relies on the microprocessor to wake up. He agreed [[NAME]] the [NAME] transceiver does not operate its receiver in sniff mode and [[NAME]] it does not have an RSSI threshold which operates in the same way as the [NAME] transceiver. The [NAME] transceiver has a better start up oscillator. The [NAME] transceiver does not have the trim function. 387 [NAME] agreed [[NAME]] as a component, the [NAME] transceiver is a better transceiver in working the invention than the [NAME] transceiver on the basis of power. However, [NAME] considered [[NAME]] there are other considerations, such as cost, availability and lead times etc. [NAME] considered [[NAME]] the trim function was a bonus and not absolutely necessary. 388 [NAME] considered [[NAME]] the [NAME] transceiver is clearly the better transceiver. He identified the quick start feature, the sniff mode, the ability to wake itself up without involving the microcontroller as all leading to a significantly better power performance. He also considered the trim function to be advantageous as it means "we can use a wider component tolerance with greater flexibility with production variations and, therefore, its advantageous for [[NAME]] reason as well". 389 The evidence of the [NAME] is to the effect [[NAME]] a number of the parameters for the [NAME] transceiver are programmable. [[NAME]] is a matter [[NAME]] is made clear in the Data Sheets for the [NAME] transceiver and I refer, for example, to Data Sheets numbered 100, 101 and 106. In addition, factors which can affect at least some of the parameters include environment, temperature, component tolerance and physical circuits. 390 The next matter the [NAME] were asked to identify in the [NAME] was any points of agreement or disagreement about whether further [NAME] is required for the [NAME] person reading the First [NAME] or the [NAME] [NAME] to understand or [NAME] the communication of data from the [NAME] using a functioning wake-up scheme. 391 The [NAME] agreed [[NAME]] the First [NAME] discloses a wake-up scheme. They disagreed on the specific nature and the level of detail required in the wake-up scheme as disclosed in the First [NAME]. 392 [NAME] considered [[NAME]] the wake-up scheme as disclosed in the [NAME] is about alerting the [NAME] to the presence of a transient [NAME] within radio communication range and this is disclosed in the [NAME] in Figs 8 and 9 and in the description of these figures in the specification. 393 By contrast, [NAME] [NAME] expressed the following view: A [NAME] person would implement a wireless communication network, however it is my opinion [[NAME]] there will be hidden complexity in the implementation. In my experience the detail in the minutia is critical, and can create significant project risk in the implementation. It is my opinion [[NAME]] a [NAME] describing a novel communication and wake-up scheme would have significant detail describing the current methods, the improvement, and detail in implementing those improvements. The 110 [NAME] does not do this, but rather simply describes a wake-up signal at a conceptual level. Wake-up signals are commonplace and not novel. The 110 [NAME] affords the [NAME] reader no advantage or improvement, and leaves it to the reader to implement in-line with their own understanding of wake up schemes. 394 The First [NAME] contains a description of the flow diagram of a method of operating a [NAME] (Fig 8), such as the apparatus shown in Fig 2. [[NAME]] description is set out above (at [32]). There is a similar description of Fig 8 in the [NAME] [NAME] (p 11 lines 10–132). 395 The wake-up scheme of the [NAME] is disclosed in Figs 8 and 9 and the descriptions thereof. [NAME] [[NAME]] said, and I accept, [[NAME]] the scheme shown in Fig 8 may be performed in a number of ways. In the case of the use of a simple receiver, the steps 850, 860 and 870 may be performed by the processor, whereas in the case of an intelligent receiver (which may have an internal processor) those steps could be performed by the receiver. The term "wake-up" signal is not defined in the [NAME], save and except for a reference to what [NAME] [NAME] called the [NAME] aspect of a wake-up scheme, being the detection of an external apparatus for the purpose of communication. The reference is to a wake-up signal "(e.g., [NAME] followed by a defined message)" (First [NAME] p 9 lines 21–23). The first aspect of a wake-up scheme (according to [NAME] [NAME]) is a device which goes to sleep periodically. The [NAME] transceiver has the following features: (1) performs steps 810 to 860 shown in Fig 8; (2) can be programmed so [[NAME]] t2 (i.e., the wait period between turning on the receiver and the measurement of the RF signal strength (RSSI)) is consistent with the example value referred to in the [NAME]; and (3) can be programmed so [[NAME]] t1 (the sniff interval) is consistent with the example value referred to in the [NAME]. 396 In the context of questions about Fig 8, [NAME] agreed [[NAME]] one implication of the wake-up signal is [[NAME]] there is a power-saving wake-up scheme which is part of the method, apparatus and [NAME] of the invention. He said [[NAME]] the [NAME] implication is [[NAME]] one is dealing with transient communications in the context of the First [NAME]. He agreed with the proposition [[NAME]] it is a very important feature of the invention in all its manifestations [[NAME]] power savings are achieved. He agreed [[NAME]] power saving is a critical consideration in the context of an in-ground unit [[NAME]] is powered by a battery. 397 Before leaving this section of the reasons, I note [[NAME]] the following facts are admitted. 398 In around November 2004, [NAME] submitted a proposal to Maribyrnong Council to supply its [NAME] for evaluation and trial and [[NAME]] proposal included [NAME], IVUs and a back-office [NAME]. Between around November 2004 and March 2005, Maribyrnong Council accepted [NAME]'s proposal. In March 2005, [NAME] installed approximately 500 [NAME] in [NAME] bays in Maribyrnong Council and at about the same time, [NAME] supplied the Council with IVUs and personal digital assistants for use in conjunction with the [NAME]. 399 On 31 March 2005, Maribyrnong Council issued its first infringement notice using the [NAME] and by the end of October 2005, the Council had issued over approximately 4,000 [NAME] infringements using the [NAME].

Lack of Best Method 400 The version of s 40 of the Act which is relevant in the case of both [NAME] is the version in force before the Raising the Bar Act. The section was in the following terms: 40 Specifications (1) A provisional specification must describe the invention. (2) A complete specification must: (a) describe the invention fully, including the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard [NAME]—end with a claim or claims defining the invention; and (c) where it relates to an application for an innovation [NAME]—end with at least one and no more than 5 claims defining the invention. (3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification. (4) The claim or claims must relate to one invention only. 401 The relevant date for the purposes of determining whether the requirement on the [NAME] [[NAME]] he or she disclose the best method known to them of performing the invention is the date of the filing of the application which in the case of the First [NAME] is 9 May 2005 and in the case of the [NAME] [NAME] is 21 July 2011. The obligation on the [NAME] is to describe the best method known to the applicant of performing the invention as at those dates. 402 The particulars of this ground as pleaded and pressed in closing submissions are as follows: The specification does not include the best method known to [NAME] of communicating data from the [NAME] using a functioning wake-up scheme because they do not describe the [NAME]. The specification does not include the best method known to [NAME] of designing or adjusting an antenna (and any other necessary hardware or [NAME]) to reliably communicate data from the [NAME] because they do not describe an antenna. [[NAME]] of this Court considered the best method requirement in s 40(2)(a) of the Act as applicable in this case in [NAME] v [NAME] [COMPANY] [2016] FCAFC 27; (2016) 247 FCR 61. [[NAME]] considered the relationship between the best method requirement and the requirement to describe the invention fully or the sufficiency requirement. [[NAME]] rejected a submission [[NAME]] the best method requirement is a subset of sufficiency and enablement, or [[NAME]] there is no separate, additional or "residual" best method requirement. After reviewing a number of authorities, the Court said (at [108]): From the above authorities the following principles may be gleaned: • Different policy reasons support the obligation to describe the invention fully and the obligation to provide the best method known to the [NAME] of performing the invention. The purpose of the former obligation is to circumscribe the [NAME] granted to the [NAME]; the purpose of the latter is to allow the public the full benefit of [[NAME]] invention when the [NAME] expires. • Although a [NAME] might not be explicitly required to act in good faith, principles of good faith underlie the best method requirement. • Even where legislation has not included an explicit "best method" requirement, courts have considered it to be a separate and additional requirement to the obligation to provide a sufficient description of the invention. • The nature and extent of the disclosure required to satisfy the best method requirement will depend on the nature of the invention itself.

Accordingly, a distinction between products and processes [[NAME]] ignores the specific features of the invention claimed is unhelpful. 404 Later in its reasons, the Court said (at [123]–[126], [129]–[130]): 123 Section 40(2)(a) requires [[NAME]] the best method of performing the invention be provided. Perform is relevantly defined in the [NAME] to include: "to carry out; execute, do"; and "to carry into effect; fulfil". The meanings of "perform" in the Shorter Oxford English Dictionary are relevantly "execute, accomplish, do, (any action, operation or process undertaken or ordered)" and "make or construct (an object)". 124 The key to understanding the obligation of the [NAME] is to understand [[NAME]] the section is directed to the method of performance of the invention. The [NAME] is circumscribed by the claims but the nature of the invention is as described in the whole of the specification. This approach accords with [[NAME]] adopted by Lord [[NAME]] in [NAME] and by the [[NAME]] in [NAME]. 125 Section 40(2)(a) expressly uses the word "method". Method is relevantly defined in the [NAME] as: "a mode of procedure" and "a way of doing something". 126 There is no distinction drawn in the language of the statute between a product and a process in providing for the obligation to provide the best method of performing the invention. … 129 It can be accepted [[NAME]] there are cases where the claim is to a product or class of products and the best method requirement is satisfied by a description of the best embodiment known to the [NAME] at the relevant time. It can also be accepted [[NAME]] there are cases where the claim is to a product and there is no requirement to provide a method of using [[NAME]] product. It is also the case [[NAME]] there is no requirement actually to have carried out the best method and [[NAME]] a prediction will suffice ([COMPANY] v [NAME] (2004) 63 IPR 524; [2004] FCA 1651 at [33]). However, it is necessary to understand the invention itself ([NAME]). As was succinctly stated by [NAME] in [COMPANY] v [COMPANY] (2004) 64 IPR 444 at [104]: in order to decide whether the invention has been fully enabled, you first have to decide what the invention is. Lord [NAME] was there addressing the sufficiency requirement, but the observation applies equally to the best method requirement. The nature of the invention will determine what is "best" in the circumstances. 130 The centrality of the invention is also emphasised in the approach [[NAME]] has been adopted in [APPELLANT], for example in [NAME]. 405 [COMPANY] v [NAME] [APPELLANT] [COMPANY] [2000] FCA 1689; (2000) 51 IPR 531 ([NAME] v [NAME] [APPELLANT]), the [[NAME]] of this Court considered the best method requirement in s 40(2)(a) as applicable in this case. [[NAME]] set out the consistory clause of the claimed invention in [[NAME]] case (at [18]): The consistory clause of the invention is as follows: "In one aspect, the present invention resides in a side loading refuse vehicle having a cab, the combination of an elongate refuse storage tank divided into longitudinally extending tank sections, a loading mechanism adjacent a side of the refuse vehicle and a refuse transfer mechanism for delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tank sections, the loading mechanism having a lid opening device and the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab, raise the lid and empty the bin into the vehicle, the bin holding recyclable waste separately from other waste in the bin and upon being emptied into the vehicle, the recyclable waste and the other waste are separately delivered by the transfer mechanism to respective ones of the said tank sections." Annexed to his Honour's judgment was a list indicating the essential features of the combination [NAME]: "(a) In a side loading refuse vehicle (b) having a cab (c) the combination of an elongate refuse storage tank divided into longitudinally extending tank sections (d) a loading mechanism adjacent to the side of the refuse vehicle and (e) a refuse transfer mechanism for delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tanks (f) the loading mechanism having a lid opening device and (g) the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab (h) raise the lid and (i) empty the bin into the vehicle (j) the bin holding recyclable waste separately from other waste in the bin, and (k) upon being emptied into the vehicle, the recyclable waste and other waste are separately delivered by the transfer mechanism to the respective ones of the tank sections. (l) the combination in claim 1 wherein the tank sections are located one above the other. (m) The combination of claim 1 or claim 2 wherein the transfer mechanism is an active transfer mechanism." It should be said [[NAME]] features (f), (g) and (h) identify three features of the loading mechanism. 406 The claimed invention in [NAME] v [NAME] [APPELLANT] was a combination of features. Although a lid opening device was an essential feature of the invention, no particular type of lid opening device was claimed. [[NAME]] fact was crucial in the reasoning of the [[NAME]] because the Court reasoned [[NAME]] the obligation was to describe the best method of performing the invention and [[NAME]] obligation was not breached even if the [NAME] knew of, but did not disclose, a better lid opening device in circumstances where the invention claimed was not of a particular lid opening device operating at any particular time. [[NAME]] said (at [52]–[53]): 52 The invention claimed is not of a particular type of lid opening device operating at any particular time. There is therefore no statutory obligation to describe which of the contemplated lid opening devices was considered to be the best, nor the preferred timing, contrary to his Honour's understanding of the section. 53 The requirement of s 40(2) of the Act is [[NAME]] the [NAME] is required to give the best [NAME] in his power as to how to carry out the invention. [[NAME]] requirement is ordinarily satisfied by including in the specification a detailed description of one or more preferred embodiments of the invention offered, with reference to drawings of specific mechanisms or structures or examples of specific process conditions or chemical formulations, depending on the field of the invention and the nature of the instruction to be conveyed. It is necessary to have regard to what is the invention claimed in the petty [NAME]. The invention here claimed is not a particular type of lid opening device operating at any particular time. It is only if it were such a claim [[NAME]] there might be a failure such as the [NAME] judge found. 407 In [NAME] v [NAME] & [COMPANY] [2016] FCA 236; (2016) 118 IPR 421 ([NAME]), the invention which was the [NAME] of the [NAME] was for an extension drilling [NAME] used in subterranean mining operations such as coal mining used to install bolts to secure the structure of roof tunnels. Justice Jessup held [[NAME]] the [NAME] had not described the best method known to it of performing the invention because it knew of a better sealing member than [[NAME]] described in the specification. His Honour referred to the following passage from the reasons of [NAME]-Moulton LJ in [COMPANY] v [COMPANY] (1912) 29 RPC 245 ([NAME] v [NAME]) (at 269): It is settled law [[NAME]] a [NAME] must act towards the public uberrima fide, and must give the best [NAME] in his power as to how to carry out the invention. He is therefore bound to tell the public all the steps [[NAME]] can advantageously be taken in carrying out the invention. But he is not [COMPANY] to claiming only the best way of carrying it out. 408 His Honour said [[NAME]] the best method of carrying out the invention need not be claimed, but it must be described. He went on to say (at [224]–[226]): 224 … In the present case, the [NAME] did claim what was, ostensibly at least, the best way of carrying out the invention claimed in Claims 1-5: the use of the device set out in Fig 3 was incorporated into Claim 6. Importantly, the [NAME] made it clear in the specification [[NAME]] this was the "drive chuck preferred": a formula, I take it, intended to equate to what was the best known method. 225 The difficulty was (and is), of course, [[NAME]] what was thereby described was not the best method known to the [NAME]. When the complete specification was filed in May 1998, the applicants had developed, to the detailed technical drawing stage, a sealing member [[NAME]] was better than any described in the specification. 226 For the above reasons, I accept the [NAME]'s case [[NAME]] the complete specification for the [NAME] did not describe the best method known to the [NAME] for performing the invention, as required by s 40(2)(a) of the Act. 409 There is perhaps a fine line between the decision in [NAME] at first instance and the decision in [NAME] v [NAME] [APPELLANT]. On appeal in [NAME], the [[NAME]] upheld the decision at first instance ([NAME] v [NAME] & [COMPANY] [2017] FCAFC 138; (2017) 348 ALR 156; (2017) 126 IPR 427). After referring to the authorities, the Court identified the relevant principles as follows (at [115]): For present purposes, the following key principles may be stated on the basis of the authorities set out above: (a) The purpose of the requirement in s 40(2)(a) to disclose the best method known to the applicant of performing the invention is to allow the public the full benefit of the invention when the [NAME] expires: [NAME] at [108]. (b) Although a [NAME] might not be explicitly required to act in good faith, principles of good faith underlie the best method requirement: [NAME] at [108]. (c) The nature and extent of the disclosure required to satisfy the best method requirement will depend on the nature of the invention itself: [NAME] at [52]-[53]; [NAME] at [108]. (d) The key to understanding the obligation of the [NAME] is to understand [[NAME]] the section is directed to the method of performance of the invention. The [NAME] is circumscribed by the claims, but the nature of the invention is as described in the whole of the specification: [NAME] at [124]. (e) The requirement to describe the best method of performing the invention is ordinarily satisfied by including in the specification a detailed description of one or more preferred embodiments of the invention: [NAME] at [53]; [NAME] at [104]. See also [APPELLANT] (5th ed) at [4-516]; [NAME], [NAME] in [APPELLANT] (2nd ed, [NAME], 2014) at [5280]. [[NAME]] distinguished the decision in [NAME] v [NAME] [APPELLANT] by saying [[NAME]] in the case before it, even accepting [[NAME]] the water seal was not part of the invention, it was necessary and important to perform the invention or carry it into effect and there was a real issue [[NAME]] needed to be overcome in designing an effective water seal (at [125] and see also [118] and [121]). [[NAME]] also made the point [[NAME]] there is a limit to "what can usefully be drawn from the factual outcome of another case on an issue such as this" (at [126]). 411 Finally for present purposes, I refer to the decision of the [[NAME]] of this Court in [COMPANY] (Ireland) (No 2) [COMPANY] v [COMPANY] [COMPANY] [2018] FCAFC 71; (2018) 264 FCR 474. [[NAME]] said [[NAME]] whether the necessary disclosure (i.e., of the best method) is made is essentially a question of fact. [[NAME]] should approach the matter in a practical and common sense manner and should have regard to the following matters: (1) the nature of the invention; (2) the significance of what is and what is not disclosed; (3) the public policy rationale which lies behind the best method requirement as explained by, among others, [NAME]-[NAME] LJ in [NAME] v [NAME] referred to above; and (4) the need to bear in mind [[NAME]] merely showing [[NAME]] a [NAME] could ascertain by routine experiment the best method actually known to the [NAME] is not an answer to an allegation of a breach of the best method requirement. 412 With respect to the fourth point, the [[NAME]] said (at [192]): Whether or not it will be open to the [NAME] applicant to not disclose relevant [NAME] on the basis [[NAME]] it is available to the [NAME] by routine experimentation will depend on the importance of the [NAME] in question, the practicality of disclosing it, and the extent of the burden imposed on the [NAME] who is left to rely upon routine experimentation. [[NAME]] question is, as we have already mentioned, to be addressed in a practical and common sense manner.

The [NAME] transceiver 413 [NAME]'s case is [[NAME]] [NAME] failed to comply with the best method requirement by failing to describe the [NAME] transceiver in the specifications of the [NAME]. 414 Figure 2 of both [NAME] is a block diagram of the [NAME] or [NAME]. It identifies, among other devices, a radio receiver (240) and a radio transceiver (250). The description of these devices in the specifications states [[NAME]] these devices are practised as a 433 MHz UHF radio receiver for transmitting and receiving radio signals to and from a [NAME], respectively. The description states [[NAME]] various UHF transceivers may be practised "such as the [NAME] [NAME] transceiver, which requires to be turned on for approximately 1ms before [NAME] energy can be detected". The description goes on to state: However, [NAME] would readily understand [[NAME]] other types of transmitters, receivers or transceivers may be practised such as low frequency (LF) transceivers. Other UHF frequencies may also be practised … 415 Figure 8 of both [NAME] is a flow diagram of a method of operating a [NAME] such as the apparatus in Fig 2. The operation at each step from 810 to 890 is described in the specifications. A wait period described as "t1" (820) is identified and it relates to start of the cycle (810) and the turning on of the radio receiver (830). There is a [NAME] wait period identified as "t2" (840) and it relates to the stabilisation of the radio receiver between it being turned on and the received RF signal strength (RSSI) being measured (850). The description further provides [[NAME]] the duration of t2 is determined according to the type of radio receiver and "is typically of the order of 1 millisecond" and [[NAME]] setting the duration of t1 "implies an on:off duty cycle of 1:250". The description also provides an indication of power consumption of a typical low-power radio receiver and the average power consumption of the [NAME] detection process (20 to 40 microamperes). 416 The starting point in [NAME]'s submissions is the undoubtedly correct proposition [[NAME]] the transceiver is a vital part of the RF communications component and [[NAME]] the component would not function without it. 417 As set out above, [NAME] [NAME] found the [NAME] transceiver in July or August 2003 and he was particularly interested in it because of certain power-saving mechanisms it used (at [300]). [NAME] [NAME] considered other transceivers such as the one manufactured by [NAME], but [[NAME]] was discarded (at [299]). The transceivers or receivers tested other than the [NAME] transceiver are identified above (at [316] and [327]). They were either abandoned or not taken into production. No other transceivers or receivers were tested other than those identified (see [327]). The only transceivers incorporated into a developed [NAME] or tested by [NAME] [NAME] were the [NAME] and the [NAME] and [NAME] [NAME] could not recall any other transceiver or device being evaluated. [NAME] agreed [[NAME]] of the two transceivers, the [NAME] transceiver was the better candidate (at [338]). It was used in almost all the test [NAME] and was used in the production [NAME]. It was used in the Maribyrnong field trials in March 2005 and in relation to the tender to Maribyrnong after the field trials (at [339]). [NAME] considered [[NAME]] the [NAME] transceiver "ticked all of the boxes" as the transceiver component in the [NAME] and he agreed [[NAME]] it was the best transceiver known to him and [NAME] for use in the RF communications component in the [NAME] (at [340]). 418 The evidence is [[NAME]] the [NAME] transceiver had various features [[NAME]] contributed to power savings. I will not repeat the evidence described above of [NAME] [NAME] (at [331]–[334]), [NAME] [NAME] (at [378]–[380]) and [NAME] [NAME] (at [385] and [388]). 419 The [NAME] transceiver also had a trim function which is a function used to fine tune the input and output impedances of the transceiver to the actual impedances of the antennas and their networks as manufactured and produced to account for variances in manufacturing tolerances. This was an advantage primarily because more widely "tolerated" components could be used and they are cheaper. [NAME] [[NAME]] said, and I accept, [[NAME]] the trim function is a bonus, but not absolutely necessary and [[NAME]] he rarely needed to use such a feature. 420 The [NAME] identify the [NAME] transceiver as suitable for working the invention. The times and estimated power consumption in the specifications are consistent with the use of the [NAME] transceiver. The stabilisation period for the radio receiver i.e., t2 in the specifications, is 1 millisecond which is the start-up time of the [NAME] transceiver compared with the much shorter start-up time of the [NAME] transceiver of 50–55 microseconds or 0.05 milliseconds. 421 The [NAME] transceiver compares unfavourably with the [NAME] transceiver in [[NAME]]: (1) it cannot wake itself up and it relies on the microprocessor to wake it up; (2) it involved the use of the microcontroller to receive and transmit data; (3) it had a considerably longer start-up time of at least one millisecond; (4) it did not have a sniff mode; (5) it did not have an RSSI threshold which operated in the same way as the [NAME] transceiver; and (6) it has an inferior start-up oscillator to [[NAME]] of the [NAME] transceiver. 422 The [NAME] transceiver does not have a trim function. 423 At the same time, the Data Sheets for the [NAME] transceiver indicate [[NAME]] the circuit is designed so [[NAME]] other parts of the device are not turned on during start-up so as to save on power consumption. 424 [NAME] [NAME], when asked which of the [NAME] transceiver and the [NAME] transceiver is the better transceiver for working the invention, said [[NAME]] it is clear [[NAME]] the [NAME] transceiver is the better device. He explained [[NAME]] was because of the features which all lead to significantly better power performance. [NAME] [[NAME]], when asked to [NAME] on the transceiver, said [[NAME]] on the basis of power, the [NAME] transceiver is a better transceiver for working the invention than the [NAME] transceiver. He said [[NAME]] as a component, the [NAME] transceiver appeared to be the better device, but it is also necessary to take into account the whole device and other factors "such as cost, availability, lead times, etcetera". 425 [NAME] submitted [[NAME]] not only has [NAME] not disclosed the best transceiver known to it, but it has failed to disclose fully the wake-up scheme used by it in [[NAME]] had it disclosed the [NAME] transceiver and how it worked, it would have been clear [[NAME]] the wake-up scheme shown in Fig 8 could be implemented as a wake-up scheme in which the radio signal was responsible for the external microcontroller waking up. [NAME] agreed [[NAME]] steps 850, 860 and 870 could be performed by an intelligent transceiver and the first time the external microprocessor became involved was at step 880 with the qualification the intelligent transceiver was likely to have some form of processor built into it. It would be possible with a "less intelligent" transceiver for the transceiver to carry out steps 850 and 860 and it would not be necessary to wake-up the external microprocessor until step 870. 426 [NAME] submitted [[NAME]] bears the onus of proof and [[NAME]] when the facts are carefully considered, the correct conclusion is [[NAME]] it has not failed to comply with the best method requirement. It complied with [[NAME]] requirement by its description of the wake-up [NAME] in the specifications by reference to Fig 8 and it was not required to identify a transceiver component. [NAME] relies heavily on the absence of evidence as to the following matters: (1) The operational parameters, including t1 and t2 in the [NAME], are identified in the specifications at p 11 lines 10–31 and there is no evidence [[NAME]] they did not reflect the best method known to [NAME] of performing a functioning wake-up scheme; (2) The operational parameters implemented by [NAME] in the [NAME], [[NAME]] is to say, there is no evidence [[NAME]] [NAME] did not implement the operational parameters in the [NAME]; (3) [[NAME]] the use of the [NAME] transceiver in a wake-up scheme is a different way of making a wake-up scheme to [[NAME]] described in the [NAME]; and (4) [[NAME]] performing the wake-up scheme with the [NAME] transceiver rather than other transceivers avoids any particular pitfalls or difficulties in performing the communication of data from the [NAME]. 427 The starting point is the wake-up scheme described in the [NAME]. The wake-up scheme is described in Figs 8 and 9 and the descriptions of those figures. The scheme shown in Fig 8 may be implemented in a number of ways in the sense of the functions performed by the receiver and those performed by the microprocessor. As already mentioned, example values for the operation of the scheme are provided. "Wake-up signal" is not defined in the specifications, although there is reference to a [NAME] transmitting a wake-up signal, for example, an [NAME] followed by a defined message and listening for valid responses from [NAME]. 428 The evidence revealed the links between the steps in Fig 8 with the features of the [NAME] transceiver as follows: (1) The [NAME] transceiver periodically waking up and detecting RSSI signal strength functions (i.e., steps 810 to 860) is performed by the transceiver and the quick start feature relates to the wait period, t2, for the radio receiver to stabilise or settle. [NAME] agreed [[NAME]] if this period is too short [[NAME]] can lead to false positives. The period can be affected by the environment, including the temperature, component tolerances and the physical circuits. In the [NAME] transceiver, the length of this period may be programmed within specified parameters by reference to an Offset Durell Timer, an RSSI Delay or a Data Filter Delay; and (2) The sniff mode feature in the [NAME] transceiver relates to the t1 period. As [NAME] [NAME] said, a sniff interval of 255 milliseconds can be programmed. In fact, the programmable range is 0.5 microseconds to 16.32 seconds. 429 There is no dispute [[NAME]] the [NAME] transceiver can be programmed within certain ranges and the selection of the specific values in those ranges depends on the specific application. The programmable ranges are consistent with the parameters for the transceiver in the [NAME]. 430 [NAME] submits, correctly in my opinion, [[NAME]] it was not put to [NAME] [[NAME]] the parameters in the [NAME] did not reflect the best method of a wake-up scheme. It is also true [[NAME]] [NAME] was not asked about the parameters actually used in the [NAME]. 431 [NAME] considered [[NAME]] if the [NAME] described in the [NAME] had been successfully commercialised, it is likely a more sophisticated and efficient wake-up scheme would have been implemented and he gave as an example, the possibility of addressing the issue by utilising an interrupt-driver wake-up scheme which is more complex than the simple polling scheme described in the [NAME]. However, I am persuaded by the evidence of [NAME] [[NAME]] the wake-up scheme described in the [NAME] is an efficient and adequate wake-up scheme and there is no reason to think on the evidence [[NAME]] [NAME] knew of a more sophisticated wake-up scheme. 432 [NAME]'s responses to various submissions made by [NAME] are as follows. 433 First, the power saving advantages of the [NAME] transceiver are based on the Data Sheets and an assertion [[NAME]] the [NAME] transceiver operates at very low power is made in a context in which no specific transceiver is identified as a comparator. The [NAME] refer to the [NAME] transceiver and states [[NAME]] other transceivers may be practised. There were a number of transceivers available at the relevant date. 434 Secondly, whilst the operational parameters in the [NAME] are consistent with the use of the [NAME] transceiver, the said parameters are also consistent with the programmable ranges of the relevant parameters in the [NAME] transceiver. It is true [[NAME]] the Data Sheets for the [NAME] transceiver referred to potential power savings, but [NAME] [[NAME]] evidence went no further than saying [[NAME]] he was interested in the [NAME] transceiver because it might achieve power savings and it was the lead candidate if it did what the brochure said. The power savings were never quantified in the evidence and, as [NAME] [NAME] said, there are other considerations such as "cost, availability, lead times, etcetera". 435 I do not consider the trim function standing alone to be of significance in light of [NAME] [NAME] evidence. 436 In my opinion, the [NAME] provide for a wake-up scheme and describe certain parameters within which the scheme may operate. The wake-up scheme operating within those parameters is efficient and adequate. [NAME], [NAME], agreed [[NAME]] the [NAME] transceiver was the best transceiver known to him and [NAME] for use in the RF communications component of the [NAME]. However, there is nothing to indicate [[NAME]] [NAME] knew of a better method of performing the wake-up scheme than [[NAME]] described in the [NAME] or [[NAME]] the [NAME] transceiver used in the [NAME] were programmed other than in accordance with the parameters. In those circumstances, [NAME] did not fail to describe in the specifications of the [NAME] the best method known to it of performing the invention. 437 [NAME] advanced two further independent grounds for rejecting the lack of best method ground. In view of the conclusions I have already expressed, it is not strictly necessary for me to consider these grounds. However, I do so for the sake of completeness. The independent grounds advanced by [NAME] must be rejected. 438 [NAME] advanced as an independent ground for rejecting [NAME]'s submission [[NAME]] it failed to describe the best method known to it of performing the invention, the problems experienced by [NAME] with a batch of [NAME] transceivers in February 2005. This was close to the date upon which the application was made. [NAME] agreed [[NAME]] a device which had a failure rate of 40 to 50% could not be endorsed unreservedly and he said [[NAME]] he would "have to disclose the failure rate as well". 439 [NAME] [NAME] referred to the failure rate with a particular batch of units, but he does not suggest, at least in express terms, [[NAME]] this is the reason, or a reason, the [NAME] transceiver is not referred to in the specifications. In fact, he does not [NAME] the topic of the reasons why the [NAME] transceiver was not referred to in the specifications and he was not asked about it by either party. 440 [NAME] relies on the onus of proof and submits [[NAME]] the onus is on [NAME] to establish [[NAME]] [NAME] has failed to describe the best method known to it of performing the invention. If an equally probable inference is [[NAME]] the failure of the [NAME] transceivers was the reason the transceiver was not disclosed in the specifications, then [NAME] would have failed to discharges its onus. 441 [NAME]'s evidence is [[NAME]] the failure of the [NAME] transceivers was in "February 2005" and [[NAME]] these failures appeared to be a failure in a particular batch of the [NAME] transceivers. It transpired [[NAME]] was the case, [[NAME]] is, there was a failure in a particular batch of transceivers. The email exchange between [NAME] [NAME] and [NAME] produced by [NAME] [NAME] dealing with the failure of the batch of [NAME] transceivers range in date from 9 February 2005 to 7 April 2005. On 7 April 2005, [NAME] [NAME] wrote to [NAME] referring to the failure of the first batch and he said "[s]o far, devices from later batches seem OK". In my opinion, [[NAME]] does not suggest [[NAME]] by the application date of 9 May 2005, the failure of the first batch was still operative with respect to the [NAME] transceiver. 442 [NAME] also advanced as an independent ground for rejecting [NAME]'s submission [[NAME]] it failed to describe the best method known to it of performing the invention, the circumstance [[NAME]] (so it contends) the [NAME] transceiver was not publicly or generally available. I have already referred to the fact [[NAME]] the [NAME] transceiver was not available through [NAME]'s Australian distributor, [APPELLANT], and the circumstances under which [NAME] [APPELLANT] obtained the [NAME] transceivers from [NAME] (at [301]). [NAME] [NAME] produced the email he received from [NAME] on 13 August 2003. It was in the following terms: [NAME], thank you for contacting [NAME] about the [NAME] part and please, accept my apology for the delay of the reply. I am currently travelling in Europe. Anyway, in order to receive more [NAME] about the [NAME] as well as samples, we will need approval from our [NAME]. [NAME] was developed in cooperation with a customer. We have permission of the customer to market the device to non-competitors. The typical [NAME] customer we would like to service is:

1) Not involved in Home or Building Fire and Security products – what is your application? 2) A well-known company with existing and historic successful product sales.

3) Possesses a sophisticated technical staff capable of designing their product around the [NAME] data sheet and application notes.

4) Is interested in at least 25,000 units per year as a minimum.

5) Preferably the customer would represent the Automotive, Medical, or Industrial marketplace. Could you please, comment on the above points and then register at the [NAME] web site (can be reached through www.[NAME] to request the full datasheet? Please, provide a company overview for your company and some [NAME] about the end customers (if the design is done on behalf of somebody else). Best regards, [[NAME]] 443 The fact is [[NAME]] [NAME] was able to obtain sufficient quantities of the [NAME] transceiver for its purposes prior to 9 May 2005 and I do not consider [[NAME]] such limitations on supply as there were constitute a reason [NAME] was not required (assuming there was otherwise an obligation to describe the [NAME] transceiver) to describe it. 444 For the reasons I have given earlier, the lack of best method ground of invalidity, insofar as it involved the [NAME] transceiver, is rejected.

The antennas 445 For the reasons which follow, [NAME] has not established [[NAME]] by not referring to the antennas at all in the specifications of the [NAME], [NAME] has failed to describe the best method known to it of performing the invention. 446 It is not disputed [[NAME]] the method and [NAME] would not work at all without an antenna. I will refer to antenna, while noting [[NAME]] the [NAME] developed by [NAME] used two antennas, one for receiving signals and the other for sending them. As [NAME] [NAME] explained, radio transmissions are always sent via an antenna in the transmitting device. Antennas convert the electrical current flowing through the wires in the device into an electromagnetic wave form carrying [[NAME]] energy through free space so [[NAME]] it can be wirelessly transmitted to remote locations. [NAME] [NAME] explained difficulties which may arise in the transmission of radio signals: It is difficult to transmit radio signals from devices in which the antenna is buried, because most of the energy being transmitted is absorbed by the ground, and only a small amount escapes into the air. Different materials have different levels of conductivity, and additional difficulties arise in certain environmental conditions, for example when the ground is wet. Further, objects between the transmitter and the receiver (such as the vehicle parked on top of the Detector Unit), and radio frequency noise from other transmissions in the vicinity can also interfere with transmissions. 447 [NAME]'s case is [[NAME]] the [NAME] do not describe the following: (1) the antenna type, configuration or power level; (2) how the output impedance of the transceiver is best matched to the impedance of the transmit antenna and its associated network of components. This matching is necessary to ensure maximum power is transmitted from the transceiver to the antenna, avoiding a reduction in the range of the resulting signal and ensuring [[NAME]] transmission is on the chosen frequency; (3) how the input impedance of the transceiver chip is best matched to the impedance of the receive antenna and its associated network of components. This matching ensures the transceiver is able to detect RF signals; (4) the additional impedance matching necessary to account for changes to impedance arising because the device was located below the road surface; (5) [NAME] [NAME] conformal mapping technique used to compensate for the effect of tar seal; (6) the technique [NAME] [NAME] used for reducing the antenna to less than a quarter of a wavelength ([[NAME]] is, the resonance circuit); (7) [[NAME]] the best transceiver was the [NAME] transceiver; and (8) [[NAME]] the RF communications component of the [NAME] or [NAME] was operable over varying temperatures. [NAME] relies on [NAME]'s evidence [[NAME]] he would have expected the [NAME] to include details on the type of antenna because antenna design is a complex area [[NAME]] is typically solved through a process of experimentation to design the optimal [NAME] and involves input from a specialist with experience in antenna design. It also relies on [NAME]'s evidence [[NAME]] in order for the [NAME] to transmit and receive data effectively, the antenna associated with the transceiver had to be designed and adapted so [[NAME]] it communicated effectively with the IVU in circumstances in which the transceiver was located underground and the IVU was in a motor vehicle [[NAME]] might be travelling past at more than 60 kilometres per hour. 449 I have already referred to [NAME] [NAME] evidence. Nevertheless, it is helpful to identify the precise detail of [[NAME]] evidence. [NAME] [[NAME]] said in his evidence-in-chief the following: (1) His assessment of his antenna design was [[NAME]] it was innovative based on the fact [[NAME]] "the ground needed to be matched"; (2) Aspects of his antenna design involved the use of "sophisticated spectrum analysers, network analysers" and a numerical package to simulate the design and self-serenade. These tools were used to conformally map, [[NAME]] is, the performance of the antenna out of the ground to match what is required in ground. [NAME] [NAME] did this by taking a series of measurements, "mathematically processing them" and then translating them to component values into the [NAME] which gave the performance; (3) The application required antennas of a particular size which are less than a quarter of a wavelength and [[NAME]] means they are electrostatic problem antennas and they are smaller than [NAME] [NAME] would normally use; and (4) Antennas of such small size require very specific and technical treatment to allow them to perform as "larger-style geometries". The specific or technical treatments or principles are applied so [[NAME]] in compressing a quarter wavelength part down to a fraction of what a wavelength should be allows the antenna to behave as a larger geometry. There was some further explanation of conformal mapping and reference to the process of reducing the size of the antenna to several centimetres by [NAME] [NAME] in [NAME]-examination. (5) Conformal mapping designed to compensate for the artefact of the tar seal is not standard and it is not referred to in any documents produced to [NAME] [NAME]. It involves measuring the free space change and then measuring the difference of the impact of the [NAME]. An exercise is carried out of compensating or mapping the complex impedance from free space to ground through adjustment of the component values. (6) The tar seal acts like the addition of a capacitor to the tuned component of the antenna. Capacitors change the centre frequency of operation which means insufficient power is transmitted out of the ground; (7) [NAME] considered [[NAME]] influence of the tar seal on a tuned resonant circuit. A calculation of the amount of pull or shift the tar seal has had on frequency is performed. An adjustment is made in the complex plane with a simulator "doing some sums". An adjustment is then made of [[NAME]] value compensating for the tar seal back to the resonant circuit values. The antenna would shift in frequency when placed in the road. The channel of the antenna can be shifted by up to 40dB, "so just by pulling the antenna away, I can reduce the range profoundly, so this is quite key in [ensuring] [[NAME]] the radio, one, remains on channel, and two, has appropriate range"; (8) According to [NAME] [NAME], conformal mapping was a technique he developed during his employment at [NAME] when he took a piece of tar seal, analysed the influence of the tar seal which was capacitive and matched the antenna and tuned it for the tar seal and the correct frequency. He said, as I understood him, [[NAME]] the technique was not an established one; and (9) The reduction of the antenna size involves a specific technique and the antenna is reduced to substantially less than a quarter wavelength. 450 Finally, [NAME] relies on the importance of the particular transceiver to the task of tuning the antenna. The [NAME] transceiver provides tuning ranges for the antenna which [NAME] [NAME] said would be selected for the antenna geometry. The [NAME] transceiver has a tuning range because of small differences in capacitors. The antenna geometry is tuned to be within the centre tuning range of the [NAME] transceiver. [NAME] explained [[NAME]] part of the reason for this is to compensate for temperature variations. [NAME] [NAME] also referred to the need to take into account temperature variations in the matching or tuning process. The [NAME] provided [NAME] to [NAME] to assist in the process of matching the antenna to the antenna circuit of the transceiver. In short, [NAME] submits [[NAME]] absent a reference to the [NAME] transceiver, the [NAME] would not be led to the Data Sheets and evaluation kit. It points to [NAME]'s evidence [[NAME]] he only learnt of the existence of the [NAME] transceiver when preparing to give oral evidence in the proceeding. 451 On the one hand, [NAME] submits [[NAME]] at the time [NAME] filed the [NAME] applications, it knew of better ways of working the invention than those described in the specifications because it had developed a functioning antenna. 452 On the other hand, [NAME] submits [[NAME]] there is nothing new or radical about the use of an antenna to wirelessly transmit data. [[NAME]] proposition is correct. [NAME] further submits [[NAME]] has not shown [[NAME]] [NAME] considered at the filing date [[NAME]] the antenna it used was essential to the best method of performing the reliable communication of data from the [NAME]. The best method of performing the invention is not a description of a particular antenna, but rather a description of wirelessly communicating data. 453 [NAME] [[NAME]] said in evidence [[NAME]] standard terminology and common sense is to the effect [[NAME]] a wake-up event means a [NAME] which moves from a sleep or low-powered state to an awake mode. This is a "very, very, very common feature of most [COMPANY] in the world" and there is a standard nomenclature and understanding about what constitutes "sleep", "wake" and a "wake-up signal". [NAME] points to [NAME]'s evidence [[NAME]] in 2004, there were 20 to 30 options in transceivers and separate receivers and transmitters. [NAME] [NAME] evidence was to similar effect. The reference in the specifications to the [NAME] transceiver would indicate to the person [NAME] in the art [[NAME]] he or she may opt, from hundreds of options, for a similar device or they may opt for a smarter transceiver. There was certainly a choice in terms of the number of transceivers, receivers and processors [[NAME]] could be used to implement the wake-up scheme described in the [NAME]. 454 I accept [NAME]'s evidence [[NAME]] the antenna used must match what he called the "driver" of the transceiver. [NAME] typically provide [NAME] about how to match an antenna to the particular transceiver. [NAME] agreed [[NAME]] [NAME] provide [NAME] to [NAME] to get the process of matching the antenna to the antenna circuit of the transceiver, "kicked off". [NAME] [NAME] said in terms of antenna it is necessary to have something [[NAME]] meets the product's (i.e., the transceiver) requirements. [NAME] submits, in my view correctly, [[NAME]], in those circumstances, it is unsurprising [[NAME]] the [NAME] do not mention an antenna and do not describe how to design or adjust an antenna to reliably communicate data from the [NAME]. 455 The type of antenna used by [NAME] in its [NAME] was a printed loop antenna on a circuit board. [NAME] [NAME] said in 2004 in the case of selecting an antenna to work with a transceiver which was on a circuit board, the use of a loop antenna which was printed on the circuit board was widespread and [[NAME]] an antenna printed on a circuit board was a very common solution in the case of a small self-contained unit the size of a USB key or a piece of soap. In addition to this, there is the evidence of [NAME] [[NAME]] previously referred to [[NAME]] if in May 2004 he was selecting an antenna to implement the invention, he would have chosen a "compact antenna", either a helical antenna or loop antenna. As I have already said, once the transceiver and the type of antenna have been selected, the person [NAME] in the art in 2004 would know [[NAME]] the [NAME] would provide [NAME] as to how the antenna and the transceiver are to be matched. I accept [NAME]'s evidence [[NAME]] this matching process would have been straightforward and routine and the disclosure of the transceiver to be used provides sufficient [NAME] to the person [NAME] in the art to develop a suitable antenna. 456 The evidence of [NAME] [NAME] and [NAME] [[NAME]] does not persuade me otherwise. 457 It is true [[NAME]] [NAME] said [[NAME]] the development of an antenna can be complex and [[NAME]] it may involve a significant testing program. I have already referred to [NAME] [NAME] evidence about the difficulties of transmitting radio signals from devices buried in the ground (at [446]). [NAME] [[NAME]] disagreed; he did not consider [[NAME]] the choice or design of a suitable antenna to implement the invention would be complex. [NAME] [[NAME]] said, and I accept, [[NAME]] the optimisation of the fine tuning of the input and output impedances of the transceiver with the actual impedances of the antenna to account for manufacturing tolerances and operating conditions is not necessary in the sense [[NAME]] it is not one value, but rather a range of values or a "curve". The trim function which assists in the fine tuning process is a bonus and it is not absolutely necessary. The fact [[NAME]] the [NAME] is buried and is to transmit signals from [[NAME]] position raises issues routinely encountered as at 2004. It is easy to determine the rate of absorption of energy by the material the signal is to penetrate. A radio signal must penetrate solid material in the case of garage entry. The barrier will reduce signal strength, but as [NAME] [NAME] said, there is always a solution in this application. [NAME] [NAME] agreed it would be a matter of running tests to make sure the device and the antenna were working correctly. I do not consider [[NAME]] [NAME]'s evidence establishes [[NAME]] any challenges to the functioning of antennas in the [NAME] could not be routinely solved in 2004. 458 I have already referred to the reasons I am not prepared to place any significant weight on [NAME] [NAME] evidence. [NAME] [NAME] description of his work, particularly his description of what he called conformal mapping and the reduction of the antenna size lacked a clear and, importantly, comprehensible description of the work he carried out such [[NAME]] a logical and balanced assessment of the nature of [[NAME]] work and its complexity can be made. I have already referred to his evidence about conformal mapping which was based, he said, on an undocumented understanding gained while working at [NAME] between 1995 and 2001. The technique [NAME] said [[NAME]] he used to reduce the antenna size was never properly explained. 459 [NAME] [[NAME]] said in [NAME]-examination [[NAME]] in the case of a [NAME] of small dimensions which was to be placed in a self-contained underground unit, the use of a printed antenna was a "compelled decision" and he agreed [[NAME]] the use of two antennas was entirely in accordance with the requirements of the [NAME] transceiver. He agreed [[NAME]] the idea of having an antenna on a [NAME] was well known in late 2003 and early 2004. He said [[NAME]] the loop antenna was substantially smaller than a wavelength and [[NAME]] it was based on the application of a known technique he had applied in previous work. The [NAME], [NAME], specified the topology and component values for the RF communications component of the [NAME] except for the antenna circuit and he agreed [[NAME]] the topologies he used were very similar. 460 The evidence of [NAME] [[NAME]] and [NAME] establishes [[NAME]] [NAME] commenced work on the [NAME] schematics and layouts in approximately December 2003. The [NAME] schematics and layouts produced by [NAME] show [[NAME]] [NAME] only ever considered the option of a printed antenna which is entirely consistent with his evidence [[NAME]] a printed antenna was a compelled decision. Furthermore, other than making the antenna larger when the footprint of the [NAME] transceiver reduced in size, the [NAME] schematics and layouts show [[NAME]] the design of the antenna did not change after January 2004. 461 [NAME] [NAME] handwritten notes of his work on the antenna in the [NAME] and the other evidence in the case provide a reasonably accurate indication of the time he spent working on the antenna and those aspects he was working on. 462 As [NAME] [NAME] put it, the handwritten notes "covers off" his work on the design of the antenna in the [NAME]. The work recorded in [NAME] [NAME] notebook could not have been started prior to 17 February 2004. There are two antenna circuits, a receive antenna circuit and a transmit antenna circuit and, as I understand [NAME] [NAME] evidence, from the beginning of March to mid to late April 2004, the only adjustments he made to the receive antenna circuit were to two component values at the far end of the receive antenna circuit and for the transmit antenna circuit, to the three component values at the far end of the circuit. [NAME] agreed [[NAME]] there was no change in the antenna circuit topology after early April 2004. The values for the production unit or version were settled upon by mid to late April 2004, according to the evidence of [NAME] [[NAME]], and it follows [[NAME]] the values were determined within a period of four to eight weeks. [NAME] [[NAME]] seemed to suggest in his evidence-in-chief [[NAME]] the "mapping of the [NAME]" exercise took in the order of three to four months, but I do not consider this to be a reliable estimate. 463 I have already indicated [[NAME]] I have a number of reservations about [NAME] [[NAME]] evidence. I place no weight on his own description of his work as innovative and complex or involving complexity. 464 [NAME] [NAME] conducted his tests in relation to the impedance of the antenna with units in the tar block or on the bench. The numbers produced are displayed on the screen of the testing device. He agreed [[NAME]] it is a matter of ordinary practice to set the antenna up in the circumstances in which it is to operate and then conduct the tests in the manner he indicated. In my opinion, the testing in the tar block and in the air was routine. [NAME] pointed out correctly, [[NAME]] there is no evidence [NAME] [[NAME]] was involved in or undertook any field testing. [NAME] [NAME] was asked about the tests which should be carried out to ensure the transceiver and the antenna were working correctly. He seemed to suggest [[NAME]] mimicking the environment e.g., water, ice and snow and different road surfaces and materials would be "quite an elaborate exercise". [NAME]'s response to this evidence is two-fold. First, it submits [[NAME]] such testing would, in any event, be routine. Secondly, and more to the point in my view, is [[NAME]] [NAME] did not carry out any such testing. 466 In my opinion, [NAME] has not failed to describe the best method of performing the invention by not describing the matters relating to the antenna identified by [NAME]. The work required for the antenna was routine work for the person [NAME] in the art. Approaching the matter in a practical and common sense manner, there is, in my view, nothing about the importance of the [NAME] or the practicality of disclosing it or the extent of the burden imposed on the person [NAME] in the art who is left to rely on routine experimentation [[NAME]] brings this case within a case where disclosure should made. 467 The lack of best method ground of invalidity is rejected.

Lack of Sufficiency 468 The particulars of this ground as settled upon by [NAME] in its closing submissions were as follows:

1. The specification does not provide sufficient [NAME] to enable the person [NAME] in the relevant art to communicate data from the [NAME] using a functioning wake-up scheme, without new inventions or additions or prolonged study of matters presenting initial difficulty in [[NAME]] [NAME] did not provide details of the wake-up signal adopted by it, [[NAME]] is to say, details of the particular intelligent transceiver it used and its features, including the transceiver's ability to wake itself up and use a low power sniff mode and RSSI threshold to minimise power usage.

2. The specification does not provide sufficient [NAME] to enable the person [NAME] in the relevant art to identify or design an appropriate antenna (and any necessary hardware or [NAME]) to reliably communicate data from the [NAME] without new inventions or additions or prolonged study of matters presenting initial difficulty, [[NAME]] is to say, details as follows: (1) the use of two antennas and the reasons for [[NAME]]; (2) the need to reduce the antenna size by using a resonance circuit; (3) the use of conformal mapping to account for the effect of the road surface on the antenna signal — a process which utilised new techniques developed by [NAME] [NAME] when he worked for [NAME] which [NAME] [NAME] asserted were not known in the field; and (4) the tuning of the antenna. 469 [NAME] and [NAME] relied on their written submissions in relation to the lack of sufficiency ground. [NAME] said in its oral submissions [[NAME]] it had dealt with the issue when it set out its criticisms of [NAME] [NAME] evidence. 470 The Australian leading authority on the meaning of s 40(2)(a) of the Act as applicable in this case is [NAME] [APPELLANT] [COMPANY] v [NAME] [COMPANY] [2001] [NAME]; (2001) 207 CLR 1 ([NAME]) at [14], [24]–[25]. The High Court in [[NAME]] case emphasised three matters. First, in considering whether the complete specification describes the invention fully, it is necessary to consider not only the body of the specification, but also the claims. Secondly, the complete specification is not to be read in the abstract, but is to be construed by the person [NAME] in the art in light of the common general knowledge at the priority date. Thirdly, the question is whether the disclosure enables the [NAME] of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty. The High Court in [NAME] endorsed the following passage in [NAME], [NAME] (5th ed, [NAME], London 1983) at §4-502: To be proper and sufficient, the complete specification as a whole ([[NAME]] is, read together with the claims, and in light of the drawings, if any) must in the first place contain such instructions as will enable all those to whom the specification is addressed to produce something within each claim "by following the directions of the specification, without any new inventions or additions of their own" and without "prolonged study of matters which present some initial difficulty". (Footnotes omitted; see also [NAME] v [NAME] [2005] FCAFC 224; (2005) 225 ALR 416; (2005) 68 IPR 1 ([NAME] v [NAME]) at [325]–[330] and [COMPANY] v [COMPANY] (No 2) [2018] FCAFC 26; (2018) 355 ALR 44 at [99]–[120].) 471 The following additional matters are also important. The fact [[NAME]] testing is necessary and the fact [[NAME]] the steps in the testing call for skill does not establish insufficiency where the steps are essentially routine for the [NAME]. Routine is not used as a synonym for simple and easy. The [NAME] may be highly qualified, both academically and in terms of practical experience. As [NAME] said in [NAME] v [NAME] [2005] FCA 67; (2005) 64 IPR 506 (at [193]): … It would not be necessary to employ such persons unless the task they had to perform was a difficult one. 472 In [COMPANY] v [COMPANY] (No 2) [2016] FCA 1238; (2016) 122 IPR 17 ([NAME] v [NAME] (No 2)), [NAME] said (at [259]): The description of the invention will not be insufficient merely because the [NAME] is expected to apply considerable skill, effort and resources to make it work. If the steps required to be taken to work the invention are readily apparent to the notional [NAME], and they are standard or routine steps within the competence of the notional [NAME], then the test for sufficiency will be satisfied. 473 As to the first matter concerning a functioning wake-up scheme, [NAME], in its opening submissions summarised its submission as a failure to provide in the [NAME] adequate details of the wake-up signal and, in particular, details of the transceiver and its features. 474 As to the [NAME] matter concerning an antenna, [NAME], in its opening submissions, summarised its submission as a failure to provide any details of an antenna. 475 In addition to repeating the submissions it made in support of its case with respect to the best method requirement, [NAME] submitted [[NAME]] it was significant [[NAME]] [NAME], who had used many devices where the transceiver is intelligent and some of the functionality is performed by the transceiver, only learned about the [NAME] transceiver in the course of preparing to give oral evidence in the proceeding. Furthermore, [NAME] said [[NAME]], although he was aware of the fact [[NAME]] there were radio receivers [[NAME]] could wake themselves up and then wake up the main microcontroller only upon receipt of a valid signal from [[NAME]] at the time he prepared his evidence, he was not aware of whether or not they were available in May 2004. [NAME] [[NAME]] evidence was [[NAME]] the lack of disclosure in the specification meant [[NAME]] to make something within the scope of the claims, a [NAME] would be required to make new inventions or additions, or engage in prolonged study of matters presenting initial difficulty. 476 [NAME]'s submissions were as follows. 477 There are two aspects to [NAME]'s lack of sufficiency argument and they are [[NAME]] the specification does not provide sufficient [NAME] to perform the claimed methods and [COMPANY] in terms of communicating data from the [NAME] using a functioning wake-up scheme and of the design of an appropriate antenna to reliably communicate from the [NAME]. 478 In addition to the High Court's decision in [NAME], [NAME] referred to [NAME] v [NAME] [2005] FCA 67; (2005) 218 ALR 408; (2005) 64 IPR 506 at [193], [NAME] v [NAME] at [324]; [NAME] v [NAME] (No 2) at [236]; and [COMPANY] v [COMPANY] (No 2) [2018] FCAFC 26; (2018) 355 ALR 44; (2018) 129 IPR 205 at [114]–[134]. 479 With respect to the adequacy of the disclosure of a method, [NAME] or apparatus which involves communicating data from the [NAME] using a functioning wake-up scheme, [NAME] submitted, correctly in my view, [[NAME]] the starting point is the disclosure in the specifications and not the [NAME] transceiver. [NAME] referred to Figs 8 and 9 and, in particular, steps 850, 860 and 870 and the accompanying description in the specification of those steps. 480 The detailed description in relation to Fig 8 includes the following: (a) step 830 when the radio receiver was turned on; (b) step 840 which involves a wait period for the radio receiver to stabilise; (c) step 850 at which point the received RF signal strength (RSSI) is measured; (d) step 860 which involves a determination as to whether the signal strength of a detected [NAME] is larger than a defined threshold; (e) step 870 if an [NAME] of sufficient signal strength is detected, a determination is made as to whether the [NAME] relates to a [NAME]. 481 [NAME] said [[NAME]] each of the steps between (and including) 810 to 850 of Fig 8 do not involve wake-up signals. Step 860 involves the detection of a radio signal which could be a wake-up signal or some other kind of radio signal. It is at step 870 [[NAME]] the radio signal is decoded and determined to be a wake-up signal. 482 [NAME] [[NAME]] expressed the opinion [[NAME]] the step of determining whether the detected [NAME] is a wake-up signal from the [NAME] at step 870 requires the [NAME] to process the radio signal carried by the [NAME] and make determinations as follows: (1) whether the radio signal conforms to the relevant communications protocol for the [NAME]; (2) whether the radio signal is valid, [[NAME]] is to say, not corrupted; (3) whether the [NAME] is identified as the destination of the radio signal; and (4) whether the radio signal is a wake-up signal or some other kind of communication. 483 [NAME] said [[NAME]] he knew [[NAME]] the step of determining whether the received RF signal is a wake-up signal from a [NAME], [[NAME]] is say, step 870 involves the underlying steps previously referred to above out of necessity. 484 [NAME] [NAME] was critical of the way in which wake-up signal was referred to in the specifications, he had no difficulty in understanding the specific sense in which it was used in the [NAME]. He had no difficulty in understanding the wake-up scheme of the [NAME]. 485 With respect to the claim of a lack of sufficiency in relation to the appropriate antenna to reliably communicate data from the [NAME], [NAME] said [[NAME]] he did not expect to see [NAME] about antenna design in the [NAME] because he did not understand them to be describing any advance or invention in radio or antenna technology. In [NAME] [NAME] opinion, the disclosure of the transceiver used provides sufficient [NAME] for [NAME] in his position to develop the product with an appropriate antenna. Furthermore, [NAME] submitted [[NAME]] even if the Court were to accept [[NAME]] hypothetical difficulties in a subterraneous environment were established on [NAME] [NAME] evidence, the description in the specification will not be insufficient where the specification does not demonstrate [[NAME]] what it claims actually satisfies the object of the invention. Those particular matters go to utility which is not pleaded. 486 With respect to the first particular of insufficiency concerning a functioning wake-up scheme, [NAME] [NAME] in his evidence identified two main types of wake-up schemes used for the purpose of initiating communications between devices. 487 The first type is a polling scheme where the transceiver in the device to be "woken-up" simply "polls" or listens at regular intervals for a signal at a particular, predetermined frequency. If no signal is received at [[NAME]] frequency, the transceiver takes no action until the next interval. If a signal is received at the correct frequency, the microcontroller "wakes up" to determine if the signal is coming from a relevant device and, if so, responds by sending back a packet of data. 488 [NAME] [[NAME]] expresses the opinion [[NAME]] broadly speaking, this is how communications occur in the [NAME] described in the [NAME], save and except [[NAME]] the microcontroller in the [NAME] wakes itself up at regular intervals, instructs the radio receiver to listen for signals from the HHU and responds if it receives such a signal. 489 The [NAME] type is an externally triggered interrupt-driven scheme. In an interrupt-driven scheme, there is often an additional specific piece of hardware integrated into the radio receiver in the device to be "woken-up", called a received RF signal strength (RSSI) detection block. This is a separate component which runs constantly, but has an extremely low power budget, as its sole purpose is to listen for signals at the relevant frequency. If the RSSI detection block detects the relevant signal, it instructs the microcontroller to "wake-up" to determine if it is coming from the transmitting device. This allows the microcontroller to remain in sleep mode for long stretches of time, conserving its power. [NAME] [[NAME]] expresses the opinion [[NAME]] the [NAME] block diagram in Fig 2 in the [NAME] supports his understanding [[NAME]] the [NAME] in the [NAME] uses a polling scheme, not an interrupt-driven scheme by reason of the fact [[NAME]] it does not include an RSSI detection block, which is a necessary component of an interrupt-driven scheme. 490 [NAME] [[NAME]] expresses the opinion [[NAME]] the use of a polling scheme is an inefficient and impractical choice, particularly where the HHU is located in a quickly moving vehicle. [NAME] considers [[NAME]] this is because there is only a small window within which to communicate with the HHU. This, in turn, means [[NAME]] the [NAME] is constantly "polling" which uses a lot of power and will affect battery life. [NAME] considers [[NAME]] a polling scheme is also impractical and unnecessary in circumstances where, for the vast majority of the time, there would not be a HHU within communications range. 491 As I have said, [NAME] considers [[NAME]] if the [NAME] described in the [NAME] had been "successfully commercialised", it is likely a more sophisticated and efficient wake-up scheme would have been implemented. In the JER, [NAME] [[NAME]] expresses the opinion [[NAME]] there would be hidden complexity in implementation of the functioning wake-up scheme and [[NAME]] the detail in the minutia is "critical" and can create significant project risk in the implementation. In his evidence at the trial, [NAME] agreed [[NAME]] he had no difficulty in understanding the term "wake-up signal" as used in the specifications and [[NAME]] he believed it was a label for the radio signal sent from the HHU to the detector unit. He agreed [[NAME]] the [NAME] would understand [[NAME]] the term "wake-up signal" was used to indicate the presence of a [NAME]. [NAME] said [[NAME]] in designing and making a [NAME] for detecting unauthorised vehicles as at May 2004, he would have employed an interrupt-driven wake-up scheme in which case he would have needed to include an RSSI detection block as an additional component of the radio receiver in the sensor. This would have allowed these sensors to remain in "sleep mode" for the majority of the time and only wake-up when a PDA came into range with the advantage in decrease in their power consumption and increasing their battery life. It seems to me, however, [[NAME]] the critical point is [[NAME]] [NAME] had no difficulty in understanding the wake-up scheme described in the [NAME]. 492 I accept the opinion of [NAME] [[NAME]] 8 and 9 of the [NAME] and the accompanying discussion of those figures disclose the details of the wake-up scheme and, in particular, steps 850 (measure RF signal strength (RSSI)), 860 ([NAME] detected above threshold?) and 870 ([NAME] detected?). [NAME] said [[NAME]] each of the steps at 810 to 850 of Fig 8 do not involve wake-up signals. Step 860 deals with the detection of a radio signal which could be a wake-up signal or other kind of radio signal. It is at 870 [[NAME]] the radio signal is decoded and determined to be a wake-up signal. 493 With respect to the [NAME] particular of insufficiency, for the reasons previously given in relation to the best method requirement, the evidence does not establish [[NAME]] the absence of a description of an antenna meant [[NAME]] the [NAME] could not identify or design an appropriate antenna to reliably communicate from the [NAME] without new inventions or additions or prolonged study of matters presenting additional difficulty. The evidence of the [NAME] establishes [[NAME]] the [NAME] would know how to implement the invention described in the [NAME] with a [NAME] using an antenna. As [NAME] [NAME] said, he would not expect to see [NAME] about antenna design in the [NAME] because he did not understand the [NAME] to be describing any advance or invention in radio or antenna technology. The disclosure of the transceiver used provides sufficient [NAME] for the development of a product with an appropriate antenna. 494 [NAME] makes a further submission if, contrary to their previous submissions, the Court was to accept [[NAME]] hypothetical difficulties in a subterraneous environment were established on [NAME] [[NAME]] evidence. The submission is [[NAME]] the description in the specification will not be insufficient where the specification does not demonstrate [[NAME]] what it claims actually satisfies the object(s) of the invention, such as the detection of vehicle presence with a particular level of accuracy or efficiency. Those matters would go to utility which is not pleaded (see [NAME] v [NAME] [COMPANY] [2002] HCA 59; (2002) 212 CLR 411 ([NAME]) at [208]). Dr [APPELLANT] puts the matter thus in [NAME] in [APPELLANT] (3rd ed, [NAME], 2019) at [26360]: Nevertheless, the position appears to be [[NAME]] insufficiency will arise if there is a failure of the specification to instruct the [NAME] reader, equipped with the relevant common general knowledge, how to make anything [[NAME]] falls within the claim in question, whereas inutility may only arise as a live issue if there is no insufficiency. In other words, the question of inutility does not arise unless the [NAME] is otherwise valid. In the circumstances, I do not need to [NAME] this submission. 495 The lack of sufficiency ground of invalidity is rejected.

Lack of Entitlement 496 The starting point is s 15 of the Act which is in the following terms: 15 Who may be granted a [NAME]? (1) [NAME] to this Act, a [NAME] for an invention may only be granted to [NAME] who: (a) is [NAME]; or (b) would, on the grant of a [NAME] for the invention, be entitled to have the [NAME] assigned to the person; or (c) derives title to the invention from [NAME] or [NAME] mentioned in paragraph (b); or (d) is the legal representative of a [NAME] mentioned in paragraph (a), (b) or (c). (2) A [NAME] may be granted to [NAME] whether or not he or she is an Australian citizen. The concept of "[NAME]" is not defined in the Act. 497 A [NAME] may be revoked on the ground [[NAME]] the [NAME] is not entitled to the [NAME] (s 138(3)(a)). 498 The Raising the Bar Act amended the Act to include s 22A and s 138(4). Those sections are as follows: 22A A [NAME] is not invalid merely because: (a) a [NAME], or a share in the [NAME], was granted to [NAME] who was not entitled to it; or (b) the [NAME], or a share in the [NAME], was not granted to [NAME] who was entitled to it. 138 … (4) A court must not make an order under subsection (3) on the ground [[NAME]] the [NAME] is not entitled to the [NAME] unless the court is satisfied [[NAME]], in all the circumstances, it is just and equitable to do so. 499 It is accepted by the parties [[NAME]] the operation of the transitional provisions mean in this case [[NAME]] s 138(4) and an order for revocation on the ground of lack of entitlement will not be made unless, in addition, the Court is satisfied [[NAME]], in all the circumstances, it is just and equitable to do so (see [NAME] v [NAME] [COMPANY] [2014] FCAFC 99; (2014) 226 FCR 324 ([NAME] v [NAME]) at [182]–[183]). 500 The leading authority on the issue of whether there are joint [NAME] of an invention is [COMPANY] v [COMPANY] [2008] FCAFC 9; (2008) 165 FCR 527 ([NAME]). In [[NAME]] case, the [[NAME]] said (at [33]–[35]): 33 The entitlement to the grant of a [NAME] as [NAME] is not determined by quantitative contribution. The role of joint [NAME] does not have to have been equal; it is qualitative rather than quantitative. It may involve joint contribution or independent contributions. The issue is whether the contribution was to the invention. What constitutes the invention can be determined from the particular [NAME] specification which includes the claims. In some cases, evidence can assist. In some cases, the reduction of a concept to a working apparatus by [NAME] may not be part of the invention, in other cases it may be. For example, the construction of an apparatus may involve no more than carrying out the instructions in the specification. This would not normally entitle [[NAME]] person to joint inventorship. On the other hand joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed. 34 One criterion for inventorship may be to determine whether the person's contribution had a material effect on the final invention. It may be [[NAME]] an invention is made as part of a collaborative effort. In those circumstances, it would ordinarily follow [[NAME]] the collaborators are joint [NAME] of the product of the collaboration. In the present case, the [NAME] of the [NAME] application was not part of a continuing collaboration recognised as such by the parties. 35 To ascertain [NAME] for the purposes of entitlement to the grant of the [NAME] it is therefore necessary to determine the contributions to the invention described in the [NAME] application. The claims may assist in [[NAME]] determination, bearing in mind [[NAME]] the claims may be to less than the totality of the invention. It may also be appropriate to investigate the contributions to the inventive steps giving rise to the invention. 501 Although there was a plea [[NAME]] [NAME] was the sole [NAME], [[NAME]] case was not pursued in closing submissions. [NAME]'s case was [[NAME]] [NAME] and [NAME] [[NAME]] were joint [NAME] of the invention. [[NAME]] in [NAME] (at [53]) approved the observations of [NAME] in [COMPANY] v [COMPANY] [2005] FCA 1474; (2005) 67 IPR 68 as follows (at [132]): Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a particular person's involvement, then [[NAME]] person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants. The fact [[NAME]] the parties were in collaboration can be a major consideration: see [COMPANY] v [COMPANY] (2001) 55 IPR 140; Re [NAME] and [NAME] (1998) 28 AAR 276; Re Applications by [NAME] (1995) 31 IPR 67; [COMPANY] v [NAME] (1997) 39 IPR 400; [NAME] v [NAME] (2003) 59 IPR 146. 503 [NAME]'s case is [[NAME]] [NAME]'s input in relation to the antenna and his work in testing the transceivers identified by [NAME] [NAME] and in developing a functioning [NAME] made a material contribution to the claimed invention. [NAME] submits [[NAME]] without [NAME]'s work, the [NAME] would not have worked at all because the [NAME] would have had no ability to communicate with the [NAME]. [NAME] put its entitlement case in terms of [NAME] [NAME] transforming [NAME] [NAME] concept into a working apparatus. 504 As I have said earlier, [NAME] [[NAME]] gave evidence [[NAME]] in or around the middle of 2003, he approached a [NAME] [NAME] at [NAME] as he was seeking an electronics [NAME] with expertise in RF communications to work on, inter alia, the [NAME]. [NAME] said [[NAME]] [NAME] was a small company with approximately four or five employees at the time and did not have the required expertise in-house. [NAME] [NAME] was a field application [NAME] at [NAME]. He recommended to [NAME] [NAME] [NAME] [NAME]. [NAME] [NAME] provided [NAME] [NAME] contact details to [NAME] [NAME]. 505 In May 2004, [NAME] [NAME] did not have any tertiary qualifications in electronic [NAME] or the design of RF communications. Nor did he have any experience or expertise in the design of RF communications. [NAME] agreed [[NAME]] he needed an electronics [NAME] with RF communications expertise to build the RF communications components responsible for RF communication in the [NAME] and [[NAME]] he needed someone with [NAME] [[NAME]] experience to design and match an antenna [[NAME]] went with the transceiver [[NAME]] ultimately formed part of the [NAME]. 506 [NAME] [NAME] and [NAME] [NAME] agreed the terms of the latter's engagement in terms of a shareholding in [NAME] and cash in December 2003. 507 [NAME] said [[NAME]] he worked on the entire design and not just the RF section. In other words, [[NAME]] also included all the other circuitry. He laid out all of the board and he said [[NAME]] he did not send in any instance any incomplete circuit boards. To the best of his recollection, in or about mid-February 2004, nobody else was working on schematics for this [NAME] for [NAME] [NAME] and all of the designs came from him. [NAME] [NAME] designed and constructed the RF communications component without which the [NAME] could not effectively communicate with the [NAME]. His work in designing and matching the antennae to the [NAME] transceiver enabled the [NAME] to wirelessly communicate with the [NAME]. In his evidence on 25 November 2020, he claimed [[NAME]] the antenna was his design. 508 [NAME] [[NAME]] drew a distinction between the [NAME] which was [NAME] [NAME] work. In terms of his work, [NAME] [NAME] identified his work on the [NAME] and the antenna design. The following passage appears in his [NAME]-examination: So you are – accept [[NAME]] you would describe what you're doing here as being in support of your claims?---No. I haven't made any claims, [NAME] [NAME]. So is it your evidence you've never described what you're doing here as being in support of your claims? [NAME] [NAME], this is my work, absolutely. [NAME] [NAME] may claim to period longer detection [COMPANY]. This is quite different to [[NAME]]. The wheel is not a car. Is it your evidence [[NAME]] you have not described your participation in this court as being in support of your claims; is [[NAME]] your evidence?---I claim this is my work, [NAME] [[NAME]]. So you are here in support of your claims. You agree with [[NAME]]?---Insofar as this is my work, absolutely. But in regards to this schematic, I don't know [[NAME]] it's the final one or the production … 509 [NAME] submits [[NAME]] there is no evidence [[NAME]] [NAME] assigned his rights to [NAME]. [NAME] [[NAME]] claims ownership in the [NAME] he developed. He recognises [NAME] [NAME] as [NAME] of the concept of the [NAME]. The fact [[NAME]] he recognised [NAME] [[NAME]] as [NAME] in the Shares Subscription Agreement is not to the point. The acknowledgement [[NAME]] [NAME] came up with the concept of the "period long detection [NAME]" in December 2003 was not an assignment in respect of work done by [NAME] [NAME] throughout 2004. It matters not if [NAME] [[NAME]] is an [NAME] of the claimed invention [[NAME]] he may have once signed a document which described the situation differently. [NAME] submits [[NAME]] [NAME] has not identified any basis on which it would not be just and equitable to revoke the [NAME]. 510 [NAME] has not established [[NAME]] [NAME] was an [NAME] of the invention disclosed in the [NAME] for the reasons which follow. 511 The following three matters, although not conclusive, suggest [[NAME]] [NAME] was not an [NAME] of the invention. 512 First, until the trial in this proceeding, [NAME] [NAME] has not claimed to be an [NAME] of the invention. On 23 December 2003, he signed an agreement, the Share Subscription Agreement, which contained an acknowledgment [[NAME]] the [NAME], or [NAME], was solely invented by [NAME] [[NAME]]. [NAME] [[NAME]] said, and I accept, [[NAME]] at no time since 2003 has [NAME] [[NAME]] claimed to [NAME] [NAME] or, to [NAME] [[NAME]] knowledge, any other person at [NAME], [[NAME]] he is an [NAME] or had some entitlement to the [NAME] or should have been named as an [NAME] in the [NAME]. 513 Secondly, it is not entirely clear whether [NAME] [NAME] is claiming to be an [NAME] of the invention in the [NAME]. In [NAME]-examination in response to a suggestion [[NAME]] he was giving evidence to advance his claims, he said he has no claims and he had not made any claims. He then seemed to draw a distinction between the [NAME] which he acknowledged was [NAME] [NAME] work and the [NAME]. In the context of the annotated circuit board, he said [[NAME]] this was "his work" and "I claim my work". It may be [[NAME]] this factor is more relevant to the stage, if it be reached, of considering whether it is just and equitable to revoke the [NAME]. 514 Thirdly, [NAME]'s case as to what it alleges to be [NAME] [NAME] contribution which had a material effect on the final invention has changed from the point in time of its pleaded case to the point in time of its closing submissions. The pleaded case was in very general terms and did not expressly identify his contribution as relating to the features of the desired transceiver, the testing and design of the antenna, the making of the [NAME] and the testing of various transceivers identified by [NAME] [NAME] and in developing a functioning [NAME]. At the beginning of the trial, [NAME]'s emphasis was on [NAME] [NAME] contribution in terms of the features of the desired transceiver and the testing and design of the antenna. In closing submissions, the case [[NAME]] [NAME] had made a material contribution to the invention by identifying the desired features of the transceiver and following [[NAME]], [NAME] had subsequently found the [NAME] transceiver was abandoned in the face of clear evidence from [NAME] [[NAME]] he found the [NAME] transceiver before he had any contact with [NAME]. I have already referred to the significant effect this circumstance has on the weight I am prepared to place on [NAME] [[NAME]] evidence. [NAME] submitted [[NAME]]'s case on entitlement in closing submissions is [[NAME]] [NAME] made a material contribution to the claimed invention by reason his "input in relation to the antenna, and his work in testing the various transceivers identified by [NAME] [NAME] and in developing a functioning [NAME]" is outside [NAME]'s pleaded case on entitlement. These matters are not expressly referred to in [NAME]'s pleadings. However, I consider [[NAME]] the pleadings are wide enough to include them. In my opinion, the references in the pleadings in relation to both [NAME] to [NAME] [NAME] not developing a radio transmitter which was capable of transmitting data relating to identified instances of overstay is wide enough to cover the matters [NAME] now advances. 515 A starting point which provides support for [NAME]'s entitlement case is [[NAME]] [NAME] and [NAME] needed an electronics [NAME] with RF communications expertise to build the RF communications component responsible for RF communication in the [NAME] and to design and match an antenna [[NAME]] went with the transceiver to be used in the [NAME]. [NAME] agreed [[NAME]] [NAME] was engaged to design the antenna for the VDU and to create the schematics and layouts for the [NAME] for the VDU. However, [[NAME]] is only a starting point and it is necessary to go on to consider the nature of the work [NAME] [NAME] actually carried out. 516 With respect to the design and matching of the antenna, for the reasons already given, [[NAME]] involved no more than the application of common general knowledge. [NAME] [NAME] handwritten notes show by reference also to the documents produced by [NAME] [[NAME]] [NAME]'s work with respect to the antenna commenced on 17 February 2004 and concluded in approximately April 2004. There was no change in the antenna circuit topology after early April 2004 and what was changing in March and April 2004 were the two component values at the far end of the receive antenna circuit and the three at the far end of the transmit antenna. The testing to obtain those values was carried out in accordance with ordinary practice and involved processes known to any competent RF [NAME]. It seems [[NAME]] [NAME]'s work in this respect took in the order of four to eight weeks. 517 With respect to the [NAME], the following should be noted. The components of the [NAME], including the battery, magnetometer, microcontroller and transceiver and their interconnections, including circuitry, must be physically placed on the board. As [NAME] [NAME] said, at the time there was a specific electronics [NAME] design [NAME] program called "[NAME]" which was used to prepare "these types of schematics and layouts" and [NAME] [[NAME]] used this [NAME]. The evidence establishes [[NAME]] [NAME] commenced work on the preparation and layouts of the [NAME] for the VDU in December 2003 and January 2004. Again, as [NAME] [NAME] said and I accept, [NAME] [NAME] was only working on the RF communications component of the [NAME] for the VDU so he prepared the schematics and layouts of the other components of the [NAME] from [NAME] provided by [NAME] [NAME] and other individuals at [NAME] working on the other elements of the [NAME]. 518 [NAME] [NAME] produced the schematics and layouts for the VUD sent to him by [NAME] [[NAME]] in 2004. It is apparent from those documents [[NAME]] there was little change in the RF components of the [NAME] schematics after 17 February 2004. In my opinion, [NAME] [NAME] work on the RF communications component of the [NAME], which was completed within a relatively short period of time, was routine. 519 [NAME] [NAME] made reference to preparing specifications for the in-ground functional testing which specified performance characteristics of the [NAME]. These specifications were written in 2005 so [[NAME]] "we could actually functionally test and deploy the units in a production capacity". As [NAME] submitted, this work has no bearing on the invention as all such products need to be tested. As [NAME] [NAME] acknowledged, the matters listed in the specification are functions of the [NAME] transceiver and are to be found in the [NAME]'s documentation (i.e., [NAME] documentation). 520 As [NAME] makes clear, the contribution of the claimed [NAME] must be to the invention and the notion of "but for" the contribution relates to the final concept of the invention. As [NAME] pointed out, a prototype will not work unless those working on it do their part, but [[NAME]] does not answer the entitlement issue. I do not consider [[NAME]] [NAME] by his work in relation to the antenna, testing in late 2003 early 2004 and in relation to the RF communications component of the [NAME], made a material contribution to the invention or the inventive concept. His contribution was based on common general knowledge or was routine. 521 In the circumstances, it is unnecessary to consider whether it is just and equitable to revoke the [NAME]. Other than asserting [[NAME]] [NAME] had not seen the later [NAME] which set out the invention over which [NAME] [NAME] ultimately claimed ownership, [NAME] contented itself with a submission [[NAME]] [NAME] had not shown [[NAME]] it would not be just and equitable to revoke the [NAME]. [[NAME]] is not sufficient to shift the onus, even the evidentiary onus, to [NAME]. The evidence from [NAME] [[NAME]] is not clear. He knew [[NAME]] [NAME] in early May 2004 was filing an application for a provisional [NAME]. In fact, he was involved in drafting it. He said he never saw the [NAME] [[NAME]] was filed "so I never had opportunity to really inform him [[NAME]] it might be challenged". He then went on to say [[NAME]] [NAME] was the one true [NAME] of the [NAME] as articulated in the agreement and [[NAME]] there is no argument "about who [NAME] is". The fact is [NAME] [NAME] made no claim to be an [NAME] for over 15 years and it has not been established by [[NAME]] it would be just and equitable to revoke the [NAME] even if an entitlement in [NAME] [NAME] had been otherwise established. 522 The lack of entitlement ground of invalidity is rejected.

Lack of Fair Basis ([NAME]) 523 [NAME] alleges [[NAME]] claims 1, 6–10 (to the extent they depend on claim 1) and claims 30–32 of the First [NAME], and claims 1–25 and 27–29 of the [NAME] [NAME], are not fairly based on the matter in the specification in [[NAME]] in each case there is no real and reasonably clear disclosure in the specification of an invention which does not involve the use of wake-up signals. Section 40(3) of the Act is set out above. It provides, inter alia, [[NAME]] the claim or claims must be fairly based on the matter described in the specification. 524 The test for internal fair basis is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed. In [NAME] [COMPANY] v [NAME] [COMPANY] [2004] HCA 58; (2004) 217 CLR 274 ([NAME] v [NAME]), the High Court said (at [69]): "Real and reasonably clear disclosure". Section 40(3) requires, in [NAME]'s words, "a real and reasonably clear disclosure." But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments. "The circumstance [[NAME]] something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance [[NAME]] material is part of the description of the invention does not mean [[NAME]] it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so [[NAME]] the alleged invention as claimed is broadly, [[NAME]] is to say in a general sense, described in the body of the specification." [NAME]'s phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks. (Citations omitted.) 525 The other point made by the High Court in [NAME] v [NAME], which is of present relevance, relates to the relevance of a consistory clause. A mere assertion in a consistory clause will not satisfy s 40(3) and [[NAME]] subsection will only be satisfied if the specification read as a whole corresponds with the consistory clause ([NAME] v [NAME] at [83] and [87]; see also [NAME] v [NAME] at [417]–[419] per Besanko, [[NAME]] and Yates JJ). 526 [NAME] submits [[NAME]] the specification in the case of the First [NAME] when read as a whole does not disclose a vehicle detection [NAME], method or apparatus in which the [NAME] communicates with the [NAME] without the aid of wake-up signals and, in those circumstances, claims 1, 6–10 (to the extent they depend on claim 1) and claims 30–32 of the First [NAME] are not fairly based. In a similar vein, [NAME] submits [[NAME]] claims 1–25 and 27–29 of the [NAME] [NAME] lack a fair basis, because there is no real and reasonably clear disclosure in the specification of an invention which does not use wake-up signals. [NAME] has not otherwise particularised this alleged ground of invalidity. 527 In my opinion, this ground of alleged invalidity must be rejected. My reasons for reaching [[NAME]] conclusion largely reflect an acceptance of the submissions made by [NAME]. 528 First, in [NAME] 2013, [NAME[NAME] considered a materially similar ground in relation to claims 1, 3, 4 and 5 of the [NAME]. He rejected the ground for reasons which, in my respectful opinion, are cogent and correct. The passages in the [NAME] quoted at [38] and [39] of [NAME] 2013 appear, in substance, in the specification of both the First [NAME] and the [NAME] [NAME]. The reasons his Honour rejected the ground of alleged invalidity were as follows (at [142]–[143]): 142 I do not accept the [NAME]'s submission [[NAME]] claims 1, 3, 4 and 5 of the [NAME] are not fairly based on the matter described in the complete specification because they are not [COMPANY] to a method or apparatus using wake-up signals. There is no necessity, arising by dint of s 40(3) of the Act, for the claims to be so [COMPANY]. I have identified a number of passages in the parent, grandparent and provisional specifications [[NAME]] describe the operation of detection apparatuses [[NAME]] do not require a wake-up signal for their operation. I have also identified the passages in those specifications which describe the particular significance of wake-up signals where the [NAME] is portable or mobile and not at a fixed location. All of these passages find corresponding expression in the complete specification. In this connection, I also refer to my summary of the invention described in the specification in [9] to [42] above. Additionally, the complete specification contains consistory statements supporting each of claims 1, 3 and 4. 143 The [NAME] sought to treat all these disclosures, individually and cumulatively, as mere stray phrases [[NAME]] do not truly describe the invention. I do not accept [[NAME]] contention. It is true [[NAME]] the complete specification refers on many occasions to the use of wake-up signals. However, on a fair reading of the specification, those references are directed principally to embodiments where a portable or mobile [NAME] is employed. This is not to say [[NAME]] wake-up signals cannot be used where the [NAME] is at a fixed location. But there is no need for wake-up signals when a [NAME] is at a fixed location. In my view, this is made clear by the complete specification itself, especially (but not exclusively) in the passages I have quoted in [38] and [39] above. The specification makes plain [[NAME]] the invention it describes is not one [COMPANY] to embodiments involving a portable or mobile [NAME]. It also makes plain [[NAME]] the invention it describes includes embodiments [[NAME]] employ a persistent wide area network. The recognition in the specification [[NAME]] some embodiments of the invention have advantages [[NAME]] others do not – because, advantageously a portable or mobile data collection device can be used – does not mean [[NAME]] the other described embodiments cannot be claimed validly. 529 Secondly, the specification in the case of each [NAME] contains disclosure of an invention [[NAME]] does not involve the use of wake-up signals by way of a consistory clause for each of the independent claims and there is nothing elsewhere in the specification [[NAME]] means the specification read as a whole does not correspond with the consistory clause ([NAME] v [NAME] at [91]; [NAME] v [NAME] [COMPANY] [2010] FCAFC 75; (2010) 86 IPR 468 at [48]). 530 Thirdly, there are clearly embodiments of the invention which do not use wake-up signals. The embodiments shown in Figs 6 and 7 and the descriptions of those figures in the body of specification may not involve wake-up signals. Furthermore, one means of carrying out the invention which would not involve a wake-up signal is identified on p 13 of each [NAME] as follows: A further advantage of inter-[NAME] communications is [[NAME]] messages such as a [NAME] overstay alert may be forwarded from [NAME] space to [NAME] space, for example, to a transmitter, repeater or [NAME] at the end of a street. 531 Finally, it is a relevant matter [[NAME]] the specification of each [NAME] uses inclusive language. An example is found on p 13 of the specification as follows: Embodiments described include detection or monitoring apparatuses [[NAME]] can be woken-up repeatedly, but at irregular time intervals, depending on when a [NAME] is present. 532 Having regard to these matters, the lack of fair basis ground of invalidity is rejected.

Lack of Inventive Step ([NAME]) 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 [NAME] [NAME] in the relevant art in the light of the common general knowledge as it existed in the [NAME] area before the priority date of the relevant claim, whether [[NAME]] knowledge is considered separately or together with the [NAME] mentioned in subsection (3). 535 In this case, the relevant [NAME] is common general knowledge and [NAME] does not rely on any prior art [NAME] of the type identified in s 7(3) of the Act. The priority date is 17 May 2004 ([NAME]). 536 "Obvious" has been said to mean very plain and a "scintilla of invention" is sufficient to support the validity of a [NAME]. An invention will involve an inventive step unless it is established [[NAME]] the person [NAME] 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 [NAME] in [COMPANY] v [COMPANY] (1989) 25 FCR 565; (1989) 13 IPR 513 [[NAME]] an invention involves "some difficulty overcome, some barrier crossed" ([COMPANY] v [COMPANY] [No 2] [2007] HCA 21; (2007) 235 CLR 173 ([NAME] (No 2) at [51]–[52]). The onus is on the party challenging validity to establish a lack of inventive step ([COMPANY] v [NAME] [APPELLANT] [COMPANY] [2002] HCA 21; (2002) 76 ALJR 816; (2002) 188 ALR 280 at [31]; [NAME] v [NAME] [COMPANY] [2015] HCA 30; (2015) 257 CLR 356 at [18] per [NAME]). 537 In the case of a combination [NAME], 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 ([NAME] v [NAME] ([APPELLANT]) [COMPANY] [1980] HCA 9; (1980) 144 CLR 253; [NAME] at [41] per [NAME], Gaudron, [NAME]; [COMPANY] v [COMPANY] (1992) 25 IPR 173 per [NAME]). [[NAME]] 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 ([NAME] at [21]). 539 Secondary evidence such as the commercial success of the invention, the fact [[NAME]] the invention satisfied a long-felt want or need, the fact [[NAME]] others have tried to find a solution, but have failed, and the copying of the invention by [NAME] may all be relevant to the Court's determination of whether the claimed invention involves an inventive step. As the High Court said in [NAME] (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 [NAME] in the art ([NAME]) will depend on the relevant art, in other words, the field of the invention. It is well established [[NAME]] the [NAME] for the purposes of determining the inventive step issue may be a team of persons ([COMPANY] v [COMPANY] [1999] FCA 345; (1999) 45 IPR 577 at [100] per [NAME]; [NAME] at [30] per [NAME] CJ, [NAME] and [NAME] JJ; at [153] per [NAME[NAME]). There is a dispute in this case about the identity of the [NAME]. 541 Common general knowledge is a narrower conception than public knowledge. The fact [[NAME]] [NAME] is publicly available and even widely circulated and widely read is not enough to make it common general knowledge. As [NAME[NAME] said in [COMPANY] v [NAME] (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 [NAME] (1971) [COMPANY] v [NAME] [COMPANY] [1978] HCA 61; (1978) 141 CLR 305, [NAME] (with whom [NAME] agreed) said (at 329) [[NAME]] 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 [[NAME]] branch of [NAME] or [NAME]. 543 [NAME] adduced evidence from three witnesses in support of its lack of inventive step case. [NAME] [NAME] gave evidence on the topic and, as I have previously said, he has expertise in the field of electronics and communications [NAME] technologies. [NAME] [NAME] has expertise in the field of [NAME] obtained from working in the [NAME] area for a number of years. [NAME] [NAME] has expertise in the field of electronics and communications [NAME] 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 [NAME] as at the [NAME] and developments in the area of [NAME] prior to [[NAME]] date. The [NAME] category consists of those witnesses who had various forms of expertise in the field of electronic [NAME]. [NAME] adduced evidence from four witnesses in answer to [NAME]'s lack of inventive step case. [NAME] [NAME] gave evidence on the issue and, as I have previously said, he has expertise in electrical [NAME] specialising in electronics design. [NAME] [NAME] is a computer [COMPANY] and [NAME] [NAME]. 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 [COMPANY] for embedded platforms, primarily in the subscription and pay-per-view television [NAME]. [NAME] [NAME] has expertise in [NAME] management, operations, planning and technology. [NAME] [NAME] has expertise in [NAME] obtained from working in the [NAME] field for a number of years. 546 In its closing submissions, [NAME] referred to [NAME] [NAME] as its lead witness in support of its lack of inventive step case. It submits [[NAME]] [NAME]'s evidence supports [NAME] [COUNSEL] evidence. In closing submissions, counsel for [NAME] referred to [NAME] [COUNSEL] evidence "as supporting evidence rather than the [NAME] evidence". I will approach [NAME]'s inventive step case in [[NAME]] way and I will, in due course, explain why [NAME] [[NAME]] evidence provides little or no support for [NAME]'s case. 547 [NAME] submitted [[NAME]] there had been a shift in [NAME]'s case with respect to the skills and expertise of the [NAME] from a case of the [NAME] having skills and expertise in [NAME] as it was before and at the [NAME] and [NAME] technology to a case where the [NAME] has expertise in [NAME] technology. [[NAME]] be so or not, it is clear [[NAME]] advances a case of the [NAME] having expertise in [NAME] technology and does not include a [NAME] with skills and expertise in [NAME] before and at the [NAME] other than, in the case of the latter, by way of providing background [NAME] 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 [NAME] spaces were well known and part of the common general knowledge in the [NAME] before and at the [NAME]. They are described in the background section of the specifications in each [NAME] (see at [23] above). The witnesses with experience in [NAME] before and at the [NAME] gave evidence of the problems. 549 [NAME] is a self-employed consultant. Prior to 20 December 2019, he was employed by the [COMPANY] ([COMPANY]). He described [COMPANY] as a leading [NAME] of advisory and consultancy services to [NAME] and public and private organisations, including [NAME], state governments, airports, hospitals, shopping centres and universities. [NAME] [NAME] made a statutory declaration on 11 September 2014 which was used by [NAME] in the opposition proceedings in the [NAME] in 2014 brought by [NAME]. He was also engaged by [NAME] in 2018 to provide expert evidence in [NAME] proceedings in this Court involving [NAME] and [NAME] (NSD 75 of 2018). 550 In his statutory declaration in 2014, [NAME] said [[NAME]] he was, at the time of the declaration, president of [APPELLANT] and a manager and [NAME] consultant of [COMPANY]. He had worked in the fields of private and public management and equipment in [APPELLANT], 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 [COMPANY] and, in January 2008, he was promoted to the role of manager and [NAME] consultant of [NAME], which was a wholly owned division of [COMPANY] specialising in the provision of consultancy services to the [NAME] [NAME]. He described his role at [COMPANY] since January 2004 as one of providing advisory and consultancy services in [NAME] management, operations, planning and technology. 551 [NAME] [NAME] commenced work for [NAME] in 1985 and he was a director from 1992. He said [[NAME]] after January 2004, when he started with the [COMPANY], he provided consultancy services to [NAME]. [NAME] said [[NAME]] chalking was the typical method of detecting overstay in unpaid [NAME] spaces before May 2004. Chalking required officers to go twice to every [NAME] 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 [[NAME]] [NAME] officers were not able to detect all infringements. [NAME] said [[NAME]] chalking was not a very efficient [NAME] and there was room for improvement in the [NAME] of time limits for unpaid [NAME] [COMPANY] in May 2004. [NAME] considered [[NAME]] view was widely appreciated by others in the [NAME] [NAME]. 552 [NAME] [NAME] 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, [NAME] [NAME] was the manager of [NAME] at the Maribyrnong City Council in the inner-western suburbs of Melbourne. The responsibilities of [[NAME]] position included the overall responsibility for managing council's [NAME] operations and [NAME]. [NAME] [NAME] swore an affidavit in the [NAME] 2013 proceedings on behalf of [NAME] and he made a statutory declaration on 9 September 2014 in the opposition proceedings in the [NAME]. In his oral evidence, [NAME] said [[NAME]] before his employment by the [NAME] and since 1974, he had worked for the [NAME], the [NAME] and the Stonnington Council. 553 [NAME] said [[NAME]] chalking was the [NAME] means of enforcing time-[COMPANY] unpaid [NAME] before May 2004 and [[NAME]] 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 [NAME] officer needed to visit [NAME] 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 [NAME] officers. [NAME] agreed [[NAME]] by reason of these disadvantages, only a very small percentage of overstaying vehicles could be identified by using the chalking method. [NAME] said [[NAME]] he was sufficiently frustrated with the difficulties [[NAME]] he spoke to [NAME] before May 2004. [NAME] identified his view to those providers to the effect [[NAME]] "it must be possible to do something better than chalking". He spoke to [NAME] [[NAME]]. [NAME] said [[NAME]] his view was widely shared amongst those persons he spoke to, [[NAME]] is to say, [[NAME]] there must be a better way to identify overstay and to enforce time-[COMPANY] [NAME]. A better way would enable [NAME] to collect and store data [[NAME]] could be used for planning and management and would increase revenue. 554 [NAME] [NAME] was, at the time he gave evidence, a rugby operations manager. However, he had worked in [NAME] 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 [NAME] and by the Adelaide City Council between March 2002 and December 2006 as Manager – [NAME] and [NAME]. In his affidavit, he described his position at the Adelaide City Council as [NAME], Regulatory Services. In this role, he was responsible for: (a) managing over 60 officers who enforced [NAME] legislation and regulations, primarily relating to [NAME]. I did not personally carry out [NAME] 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 [NAME] 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 [NAME] a range of municipal needs (some examples of which are discussed in paragraph 19 below); (d) preparing memos and reports to [NAME] on issues such as policing strategies, dealing with complaints, recommendations for [NAME] and methods for increasing efficiencies, and statistical analyses on revenue versus expenditure; and (e) negotiating contractual agreements for projects on behalf of [NAME] (including contracts for [NAME], hardware and other equipment for [NAME]) and preparing budget documents for these projects to present to Council for their approval. These projects included the introduction of PDAs for [NAME] officers, discussed further in paragraphs 102 to 109 below. 555 [NAME] [NAME] gave similar evidence to the other [NAME] [NAME] about the use of chalking in the period prior to May 2004 as a means of [NAME] for timed on-street [NAME]. He also identified the disadvantages of chalking in similar terms to the other witnesses. [NAME] said [[NAME]] he considered it "inevitable" [[NAME]] all stages of the [NAME] cycle would eventually become fully automated. He did not know how long it would be before [[NAME]] 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 [[NAME]], 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 [NAME]. The evidence establishes [[NAME]] before and at the [NAME], [NAME] of unpaid but time-[COMPANY] [NAME] was primarily carried out using manual methods such as chalking. The [NAME] of [NAME] restrictions by chalking was not a very efficient [NAME] because officers needed to go twice to every [NAME] 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 [NAME] officer because he or she did not return to the vehicle before it was driven away. There was room for improvement in the [NAME] of time limits for unpaid [NAME] [COMPANY] in May 2004 and [[NAME]] was widely appreciated by others in the [NAME]. 557 One person in the field ([NAME] [NAME]) was so frustrated by the difficulties caused by chalking [[NAME]] he discussed them with a [NAME] in the early 2000's and before May 2004. He had a discussion with [NAME] before May 2004. The view [[NAME]] it should be possible to come up with something better than chalking was a widely held view. However, there is no evidence [[NAME]] any person in the [NAME] knew what the solution might be or [[NAME]] before and at the [NAME] any local council had engaged an [NAME] to design or create a product to [NAME] or overcome the inefficiencies of the chalking method. I note [[NAME]] in this context, [NAME] said [[NAME]] he had regular interactions with representatives from other [NAME] and [[NAME]] he expected he would have become aware of the fact if a local council had engaged an [NAME] to design such a product. 558 Other methods of enforcing time limits in [NAME] spaces before and at the [NAME] were [NAME] meters and there were three types of [NAME] meter [COMPANY] in use in user pay [NAME] areas, being single space coin and multi-space "pay and display" and "multi-bay" [COMPANY]. "Pay and display" [NAME] ticket machines were typically installed on the side of the street and members of the public were required, upon [NAME] 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" [NAME] [COMPANY] were also used for on-street [NAME]. An electronic [NAME] meter similar to a pay and display meter was installed for a series of numbered [NAME] bays. Members of the public were required upon [NAME] their vehicle, to walk up to the [NAME] 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" [NAME], save and except [[NAME]] the person [NAME] 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 [NAME] and [NAME]. 559 The evidence as to trends towards the use of technology and automation in the [NAME] [NAME], by May 2004 was as follows. First, personal digital assistants, or PDAs, were competing with the [NAME] handheld computer and replacing handwriting in carbon copy books for the issuing of [NAME] infringement notices. Secondly, [NAME] 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 [COMPANY] was becoming more streamlined. There were no sensors used in [NAME] before and at the [NAME]. Nor is there any evidence [[NAME]] any person working in the [NAME] knew or considered [[NAME]] sensors could be used as an alternative to chalking. [NAME] said [[NAME]] it never occurred to him before [NAME] approached the [NAME] and proposed the trial of the [NAME] [[NAME]] a sensor detection [NAME] could be used as an alternative to chalking. [NAME] said [[NAME]], to his knowledge, such a proposal in [NAME] had not previously been put forward. [NAME] said [[NAME]], to the best of his recollection, the earliest date upon which he became aware [[NAME]] companies or persons were using or investigating or developing the use of sensor devices in [NAME] was in about late 2005 or 2006 when he heard about a [NAME] called "[NAME]" which was [NAME] to trials in New Zealand. [NAME] [[NAME]] did not give evidence [[NAME]] he was aware of sensors before and at the [NAME] or [[NAME]] sensors could be used in [NAME] or in vehicle overstay detection. 560 There was evidence about the extent of automation in the [NAME] before and at the [NAME] and the extent to which those with the common general knowledge in the field anticipated [[NAME]] process would continue. I do not think at the end of the evidence [[NAME]] any clear picture emerged. 561 [NAME] [[NAME]] did not consider it inevitable [[NAME]] the identification of parked vehicles which had overstayed would eventually become fully automated. 562 By contrast, [NAME] considered [[NAME]] it was inevitable [[NAME]] all stages of the [NAME] 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 [NAME] and third stages of [NAME], and the increased efficiency and cost savings from the use of technology in those stages. He also considered [[NAME]] [NAME] were keen to introduce technology [[NAME]] functioned as a "one stop shop" combining multiple stages of a process into a single, streamlined process. [NAME] [NAME] 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 [NAME] device; and (3) the transition from manual [NAME] meters with a dial to electronic [NAME] meters with digital screens. 563 However, as [NAME] correctly pointed out, [NAME] [NAME] examples were tied to improved efficiency, rather than the level of human intervention in the process of [NAME] because in each case, a [NAME] officer had to observe the vehicle or read the expiry sign on the meter to determine vehicle overstay. [NAME] [NAME] 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 [NAME] infringement notice to an illegally parked motor vehicle. By moving away from the first stage of handwritten and the [NAME] stage of the [NAME] 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 [NAME]. I see. And so in your interpretation – to your understanding of automated and fully automated, is [[NAME]] a human is involved with the process. Is [[NAME]] correct?---[[NAME]]'s correct. And it is my view in [NAME] [[NAME]] a – [[NAME]] a human should be involved at all times in the issuing of an infringement notice. 564 I turn now to [NAME] the common general knowledge of sensors as at the [NAME]. 565 [NAME] [NAME], whose qualifications are described below (at [594]–[596]), said [[NAME]], while he was aware [[NAME]] technologies such as sensors, timers, cameras and image processing [NAME] existed before May 2004, he was not aware [[NAME]] any of these technologies were used in [APPELLANT] or elsewhere to enforce time restrictions in [NAME] spaces. Any solution based on sensors, timers, cameras or image processing technologies would, to [NAME] [NAME] knowledge, be a new [NAME] method. More generally, he said [[NAME]] as at May 2004, he was aware of a broad range of sensing devices and of the principles of electrical [NAME] [[NAME]] governed their operation, including inductive sensors, capacitive sensors, infrared sensors (both time of flight and interruption), pressure sensors, video cameras, radar and ultrasonic sensors. [NAME] [NAME] referred to seeking to improve existing [COMPANY] in free or paid [NAME] and, as an alternative, investigating different technologies, including the use of "sensors, timers, signalling and/or image processing and associated reporting and [NAME] mechanisms". [NAME] said [[NAME]] one of the sensors it may be possible to investigate was the use of an inductive loop sensor. 566 [NAME] [NAME] 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 [[NAME]] was the case well before 2004 and remained the case today. The components have been integrated or packaged into single chips or modules. [NAME] [NAME] was, in addition to the sensing transducers identified by [NAME] [NAME] (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, [NAME] [NAME] was aware of different types of magnetometers, for example, flux-gate magnetometers and Hall-effect sensors. The magnetometers of which [NAME] [NAME] was aware in May 2004 were "large and inefficient devices as compared to magneto resistive magnetometers". In [NAME] [NAME] opinion, Hall-effect sensors were smaller, but not suitable to measure the earth's magnetic fields. As at May 2004, [NAME] [NAME] was not aware of compact low power magnetometers of the type used in the [NAME]. [NAME] said [[NAME]] he noted [[NAME]] a magnetometer measures magnetic fields and [[NAME]] 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. [NAME] said [[NAME]] as at May 2004, he was aware [[NAME]] 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 [[NAME]] using a magnetometer in this way is an indirect way of sensing, in [[NAME]] 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. [NAME] [NAME] first became aware of compact magnetometers to detect the presence of vehicles like motor vehicles when he was engaged in the [NAME] 2013 proceeding. 567 [NAME] [[NAME]] explained in his oral evidence [[NAME]] as at May 2004, he was aware [[NAME]] magnetometers measure magnetic field, but he was not aware [[NAME]] a magnetometer could detect metal objects or [[NAME]] they were used to detect objects [[NAME]] influence magnetic fields. [NAME] [[NAME]] on the other hand, said [[NAME]] he agreed with [NAME] [[NAME]] magnetometers are really detecting or measuring the earth's magnetic field, but the fact [[NAME]] the field would be distorted by pieces of metal, and particularly a large piece of metal like a vehicle, was obvious to him. 568 [NAME] said [[NAME]] he was aware at the time he gave evidence [[NAME]] magnetometers of the type disclosed and claimed in the [NAME] had been available since 1996. He said [[NAME]] if he had a design project in May 2004, it was his practice to consider new technologies and [[NAME]] one source of informing himself would be to explore existing products made by [NAME]. [NAME] [NAME] 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 [NAME] said [[NAME]] he was aware of magnetometers in 2004. However, his experience of them to [[NAME]] date was large scale, [[NAME]] 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 [[NAME]] magnetometers were available in a smaller size suitable for deployment in a [NAME] such as a [NAME] as a result of his involvement in the opposition in the [NAME]. 570 [NAME] [NAME] was the only electronic [NAME] who was aware of smaller magnetometers at the [NAME]. He had used a type of magnetometer called Hall-effect sensors before May 2004. He said [[NAME]] 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. [[NAME]] did not relate to a project involving [NAME]. [NAME] [NAME] gave the following evidence (at T636): [NAME]: And I just want to suggest to you [[NAME]] you didn't know of a magnetometer as at May 2004 [[NAME]] 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. [NAME]: Look, I — I knew of them. I had not used them, but — but I had some — I had some knowledge. [NAME]: Thanks. [NAME]: Just not detailed knowledge. 571 [NAME] said [[NAME]]-effect sensors not only do not measure the earth's magnetic field, they are typically designed to measure static fields and [[NAME]] they would not be suitable in any way in this application. [NAME] said [[NAME]]-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 [NAME]. 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 [NAME] [NAME] evidence. As to magnetometers, although an appropriate magnetometer in terms of size and suitability was available, I am not satisfied on the evidence [[NAME]] availability was part of the common general knowledge. 573 I turn now to [NAME] the evidence of [NAME] [NAME] who was, as I have said, [NAME]'s lead witness on lack of inventive step. 574 [NAME] [NAME] is a director of [COMPANY] ([NAME]) which he described as "a [COMPANY] [NAME] and project management [COMPANY] specialising in medical device and diagnostic device product development". 575 As I have said, [NAME] [NAME] has specialised knowledge in the field of electronics and communications [NAME] technologies. He made two statutory declarations in 2014 in the opposition proceedings in the [NAME], one on 28 May 2014 and the other on 5 June 2014. The [NAME] statutory declaration was not read in this proceeding and I will refer to the first statutory declaration as simply "the statutory declaration". [NAME] [NAME] prepared a 23 page report as part of his engagement in the opposition proceedings and [[NAME]] report was tendered in this proceeding. 576 [NAME] [[NAME]] holds a Bachelor of [NAME] ([NAME]) with Honours from the [NAME] which he obtained in 1992. In the course of his undergraduate degree, he specialised in RF design, satellite communications and network [NAME] technologies. [NAME] [NAME] has carried on business through [NAME] since 2010. From July 2005 to August 2010, he was involved in projects relating to the design of diagnostic medical devices. As [NAME] [NAME] himself says in his statutory declaration, since 2005 he has worked exclusively in the field of medical devices. 577 [NAME] [NAME] described his employment from 1992 to 2005 in detail. Of relevance for present purposes, is [[NAME]] between April 2004 and July 2005, [NAME] [[NAME]] was employed by [NAME] as a hardware manager. [NAME] was an [COMPANY] which developed red light camera [COMPANY] for detecting and issuing tickets for traffic violations with [COMPANY] deployed mainly in the United States of America. As a hardware manager at [NAME], [NAME] [NAME] managed the manufacturing, testing and roll out of red light camera [COMPANY]. He worked closely with a team of engineers and [NAME]. [NAME] said [[NAME]] a company called [NAME] was at the technological forefront in the field of red light detection [COMPANY]. 578 The [NAME] [NAME] detected traffic violations using a video camera. The [NAME] [NAME] was based on the use of inductive loop technology, which [NAME] [NAME] described as using "a magnetic field to detect the presence of cars over a crossing and correlated [[NAME]] data with data relating to the status of the lights ([[NAME]] is, whether it was red or not)". [NAME] said [[NAME]] the inductive loops used by [NAME] were placed in the surface of the road. 579 It is to be noted [[NAME]] [NAME] had one month's experience with [NAME] before the [NAME]. 580 In 2014, [NAME] was asked by [NAME] to [NAME] a particular problem. The background to the problem is taken from the First [NAME] and is as follows: Demand for on-street [NAME] spaces in today's modern cities often exceeds supply, which necessitates rationing of the [NAME] resource by implementation of time restrictions. [NAME] time restrictions typically vary according to the competing needs and demands of a given area. Time restricted public [NAME] spaces may require the payment of a fee or be free of charge. [NAME] meters or similar devices may be installed to collect fees. In any case, time limits are applied to [NAME] spaces to ensure equitable sharing of access to a [COMPANY] public resource to promote the interests of the community. [NAME] of time restrictions in public [NAME] spaces is a central element of any effective [NAME] management program. [NAME] management requires regular and consistent [NAME]. However, existing methods for identifying vehicles [[NAME]] have exceeded a [NAME] space's time limit are inefficient. For example, a traditional method of detecting vehicles [[NAME]] have exceeded a [NAME] 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 [NAME] 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 [NAME] authority, • [NAME] spaces within the same general area [[NAME]] have different time limits (e.g., 1-hour & 2-hour) must be enforced separately, and • The [NAME] can be defeated simply by either by rubbing off the chalk mark or moving a vehicle to a different [NAME] space after a [NAME] officer has "chalked" types of cars in a particular area. 581 The question [NAME] [NAME] was asked to [NAME] was as follows: Assume you are provided with this background in May 2004. Using only the background knowledge you had at [[NAME]] date, and having regard only to the [NAME] you would regularly have considered at [[NAME]] date, can you think of a solution [[NAME]] would overcome or at least ameliorate the foregoing disadvantages? 582 [NAME] [[NAME]] report addresses [[NAME]] question. 583 [NAME] said [[NAME]] there were four options and each of them involved the use of sensors. He described the options in the following way: • A [NAME] where the [NAME] space sensors are wired to a local site controller, and then potential violation [NAME] is transmitted to a central dispatch location, which communicates with a [NAME] officer in the field and co-ordinates the [NAME] response. • A [NAME] where the [NAME] space sensors are wired to a local site controller, and then potential violation [NAME] is transmitted directly to a [NAME] officer in the field who initiates the [NAME] response. • A [NAME] where the [NAME] space sensors are wirelessly connected to each other in a "daisy chain" and then wirelessly to a local site controller, which transmits potential violation [NAME] is [sic] directly to a [NAME] officer in the field who initiates the [NAME] response. • A [NAME] where the [NAME] 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 [NAME] officer in the field who initiates the [NAME] response. 584 [NAME] [NAME] 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, [NAME] [NAME] set out what he described as a general high-level solution architecture. He states [[NAME]] this provided an overview or summary of all the [COMPANY] considered possible. He said [[NAME]] 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 [NAME] detection and [NAME] response architecture". 586 In terms of detectors or sensors, [NAME] [NAME] 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 [NAME] said [[NAME]] any of the sensors could be used in any number of combinations to detect the presence of vehicles in a particular set of [NAME] 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 [COMPANY], cut into the surface of the [NAME] 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, [NAME] said [[NAME]] of these two sensors, the inductive proximity sensor would be the easiest to install and was most likely to involve lower costs. This means [[NAME]] it was the preferred sensor for most [NAME] detection applications outlined in his report. 589 [NAME] [NAME] then turned to consider transmission [COMPANY] and his [COMPANY] 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 [NAME] [NAME] identified the third transmission solution shown in para 11.9 as involving the quickest installation and at the lowest cost. 591 [NAME] [NAME] addressed the power for the transmission [COMPANY] and, in relation to the solution shown in para 11.9, he states [[NAME]] 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 [NAME] suggesting [[NAME]] his report was influenced by knowledge he acquired after May 2004, [NAME] [NAME] said the following: … my frame of mind coming into this was very much one of an [NAME] solution framework. So … I started by imagining a range of possible [COMPANY] 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 [COMPANY] and having some sense, I think, of the economics related to installation and operation of [COMPANY] in general. … 593 I have reached the conclusion [[NAME]] [NAME]'s opinions do not establish [[NAME]] the invention described in the [NAME] were obvious or very plain. Those opinions do not establish [[NAME]] the [NAME] would be led directly or as a matter of course to the invention. Before setting out my reasons for reaching [[NAME]] conclusion, it is necessary to refer to evidence given by [NAME] [NAME], [NAME] [NAME] and [NAME] [NAME]. 594 [NAME] [NAME] is employed at [NAME] as a senior [NAME] [NAME] and [[NAME]] position involves providing leadership and technical expertise for embedded hardware and [NAME] development for sonar signal processing related products used in the defence sector. 595 [NAME] [NAME] was engaged by [NAME] in 2014 in the opposition proceeding before the [NAME]. He made a statutory declaration in [[NAME]] proceeding on 11 September 2014. 596 In 2014, [NAME] [NAME] had had approximately 18 years' experience in the field of product development and technology [COMPANY] for embedded platforms, primarily in the subscription and pay-per-view television [NAME]. At [[NAME]] time, he was employed as a [COMPANY] at [APPELLANT], a business involved in the design and building of embedded hardware [COMPANY], including set top boxes and modem and router components. [NAME] [NAME] holds a Bachelor of [NAME] majoring in [COMPANY] from the University of Tasmania, a Doctor of Philosophy involving a thesis in the field of computer [NAME], specifically in the area of performance analysis of queuing [COMPANY] for telecommunications networks. [NAME] completed a Master of [NAME] between January 2011 (part-time) and 2014. He described in his affidavit his employment between October 2005 and September 2014, including as a consultant [NAME] [NAME], a [NAME], a senior [NAME] [NAME] and a [COMPANY]. He also described his employment from 2016 in a contract role as a senior [NAME] [NAME]. 597 In his statutory declaration, [NAME] [NAME] addressed the problem which had been presented to [NAME] [NAME] and he addressed [NAME] [NAME] response to the problem. He took a very different approach to [[NAME]] taken by [NAME]. 598 [NAME] [[NAME]] expresses the opinion [[NAME]] 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 [NAME]. 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. [NAME] said [[NAME]] in the context of a client seeking to improve the efficiency of its [NAME] 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 [[NAME]] apply to any solution. He identified the following questions as critical questions [[NAME]] he would ask: (1) how does the client measure efficiency in [NAME]? (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? [NAME] considered [[NAME]] 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, [[NAME]] is, the number and kind of [NAME] spaces, the ease of adding more [NAME] spaces, etc.? and (7) what level of accuracy of vehicle identification is required, [[NAME]] 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 [COMPANY], [NAME] said [[NAME]] in seeking to improve existing [COMPANY] in free or paid [NAME], a variety of different technologies could have been investigated to try and come up with new methods of enforcing time-[COMPANY] [NAME]. The technologies included the use of sensors, timers, signalling and/or image processing and associated reporting and [NAME] 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 [NAME] 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 [NAME] said [[NAME]] he was aware before May 2004 [[NAME]] inductive loop sensors were used for traffic light control. In [NAME] [NAME] opinion, the costs involved in the research and development work needed to implement a sensor-based technology of this kind for the purpose of [NAME] were likely to have been significant. 601 [NAME] [[NAME]] does not agree with [NAME] [[NAME]] he would have been directly led as a matter of course before May 2004 to try any of the [COMPANY] proposed in [NAME]'s report. He provides a number of reasons in support of [[NAME]] opinion. The problems [NAME] [[NAME]] identifies mean [[NAME]] he would not have investigated any [NAME] of the kind proposed by [NAME] 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 [NAME] methods at substantially less cost and complexity. He said, by way of example, [[NAME]] 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 [NAME] 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. [NAME] [NAME] 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 [NAME] [NAME] has never worked in traffic [NAME] and he did not know much about cost or time-efficient methods of [NAME]. He has never considered work to improve [NAME] efficiencies. He made it clear [[NAME]], as far as the problem is concerned, the solution he would adopt would depend on the level of efficiency the [NAME] authority wanted to achieve and at what cost. [NAME] is correct to point out [[NAME]] despite [NAME]'s opinions as described above, he immediately identified [[NAME]] it would be possible to use sensors, timers, signalling and/or image processing and associated reporting and [NAME] mechanisms. [NAME] [[NAME]] agreed in [NAME]-examination [[NAME]] whether the use of an inductive loop sensor was an appropriate solution was, like the other [COMPANY] he proposes, dependent on the results required and the client's budget. [NAME] [[NAME]] acknowledged [[NAME]] he was and is not an expert in sensors. He was aware [[NAME]] inductive sensors were installed in groups in the ground, [[NAME]] is, subterraneously. He agreed [[NAME]] 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. [[NAME]] research would involve: Either calling [NAME] 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 [NAME] said [[NAME]] 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 [NAME]-examination [[NAME]] a time of day clock may be required for circumstances where the [NAME] limits change over time and possibly for [NAME] purposes to issue an infringement notice. He was clear [[NAME]] a time of day clock would work. [NAME] agreed [[NAME]] as an alternative to indicators to a [NAME] officer [[NAME]] 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 [NAME] officer. He agreed and he said [[NAME]] he would have known [[NAME]] as at May 2004. In other words, he agreed [[NAME]] a digital means would work. 606 [NAME] [[NAME]] was asked to provide his opinion as to how he would have designed and made a [NAME] for detecting unauthorised vehicles as at May 2004. He first addressed the design of the sensor. He said [[NAME]] 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, [NAME] said [[NAME]] he would have chosen this as the sensor because magnetometers are effective at detecting large metal objects such as vehicles and [[NAME]] 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 [NAME] [[NAME]] addressed the communications platform and said [[NAME]] 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 [NAME] [NAME] 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 [NAME], [NAME] [NAME] would have considered two different configurations as a matter of course, in the expectation [[NAME]] he would be able to develop a [NAME] using either configuration. He said [[NAME]] 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 ([NAME]). [NAME] 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 [[NAME]] they could be constantly "awake" and ready to receive messages from the sensors. Communications would travel from the gateways to a back office [NAME] 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 [NAME] would make determinations about various matters, including whether the vehicle had overstayed the allowable [NAME] time limit for the relevant [NAME] space. The back office [NAME] and [NAME] officers on the street could interact with the latter using an off-the-shelf PDA, and the [NAME] could send notifications to alert the [NAME] officers to overstaying vehicles through a beep or alarm. 610 [NAME] said [[NAME]] the [NAME] comprising [NAME] is the [NAME] he would implement in the first instance because of the benefits he could see to using this approach. He identified some disadvantages with [NAME]. He recognised the option would require the installation of substantial infrastructure and, therefore, it would involve significant costs. [NAME] said [[NAME]] whilst he was of the view [[NAME]] 1 is likely to represent a better long term solution, he accepted [[NAME]] in practice, [NAME] such as [NAME] would prefer to take an incremental approach to the adoption of new technology. 611 [NAME] [NAME] [NAME] option involved mobile data terminals (Option 2). [NAME] 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 [NAME] [NAME] 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 [NAME] officer to view [NAME] received from the sensors on the screen of the PDA and decide what action to take. If the [NAME] officer decided to issue a fine based on [NAME] received from the sensors, they would already be in place to do so. 612 [NAME] [NAME] outlined the advantages of Option 2 which included significantly fewer upfront installation costs than [NAME]. 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 [NAME] time limits. 613 [NAME] said [[NAME]] in the case of Option 2, either the sensors themselves or the PDA could determine vehicle overstay. The [NAME] 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 [NAME] [NAME], [NAME] [NAME] performed an exercise whereby he compared the integers of the method, [NAME] and apparatus he described and the integers of a number of claims in the First [NAME] and a number of claims in the [NAME] [NAME]. He did not [NAME] all the claims in the two [NAME]. 615 I do not consider [[NAME]] I can place any significant weight on the evidence of [NAME] [NAME] for the reasons which follow. 616 First, in [NAME] [NAME] case, there is a substantial risk of hindsight bias. [NAME] was given the [NAME] before he designed and made his [NAME] for detecting unauthorised vehicles as at May 2004. Furthermore, he was familiar with [NAME]'s apparatus which is alleged to infringe the [NAME]. In December 2010, [NAME] [NAME] commenced doing work for [NAME] for an initial period of nine months and then for a further three months. He provided advice to [NAME] in relation to the design of the hardware and firmware components of [NAME]'s vehicle detection product. He was not involved in providing advice on all aspects of the [NAME], but he knew [[NAME]]'s in-ground sensor unit was self-contained, battery operated and equipped with RF and antenna circuitry. He was aware [[NAME]] it was installed subterraneously and [[NAME]] the overall purpose of the product or [NAME] was the detection of vehicle overstay in car [NAME] spaces. 617 Secondly, [NAME] [[NAME]] preferred [NAME] and said [[NAME]] this is the [NAME] he would seek to implement in the first instance. This was a matter upon which the [NAME] were agreed. [NAME] agreed [[NAME]] [NAME]'s [NAME] had the benefits [[NAME]] [NAME] identified and [[NAME]] he would also choose to implement a centralised [NAME] in the first instance. [NAME] [NAME] identified what he considered to be the advantages of a centralised [NAME]. 618 The significance of [NAME] [NAME] preference for [NAME] and [NAME] [[NAME]] agreement with [[NAME]] opinion is [[NAME]], as [NAME] said, the design which [NAME] [[NAME]] develops as a result of his design process is different from the methods, [COMPANY] and apparatus described and claimed in the [NAME], both in terms of the particular set of [COMPANY], functions to be supported and how the components are organised to support their functions. [NAME] said [[NAME]] his Option 2 involved "significantly fewer upfront installation costs than [NAME]", and was "more compatible with existing practices for determining vehicle overstay", he agreed [[NAME]] he was no more familiar with the issues facing [NAME] in operating [NAME] [COMPANY] than the ordinary motorist or pedestrian. 619 Thirdly, there is force in [NAME] [NAME] evidence questioning assumptions made by [NAME] in addressing the problem put before him. As [NAME] states, [NAME] assumed [[NAME]] an "unauthorised vehicle" is a vehicle which has overstayed and [[NAME]] the [NAME] is for on-street [NAME]. As [NAME] [[NAME]] said, those assumptions affect the range of options to be considered in designing and making a [NAME] for detecting unauthorised vehicles. 620 [NAME] [NAME] 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. [NAME] [[NAME]] expresses the opinion [[NAME]] magnetometers are commonly used to detect objects which influence magnetic fields, such as coils and large metal objects such as vehicles. [NAME] [NAME] used a type of magnetometer called Hall-effect sensors before May 2004, including in a project he worked on at [NAME] 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, [NAME] agreed [[NAME]]-effect sensors were not suitable to measure the earth's magnetic field. [NAME] [[NAME]] agreed with this opinion and said [[NAME]]-effect sensors would not be suitable in any way for "this application". 621 [NAME] [[NAME]] expressed the opinion [[NAME]], as at May 2004, there were many alternative approaches which could have been investigated by someone designing a [NAME] for detecting unauthorised vehicles. He would not have immediately opted for a sensor-based solution. He considers [[NAME]] the installation of multiple sensors would be a more expensive choice than the option of improving or adapting existing [COMPANY] involving the manual chalking method and PDAs. [NAME] said [[NAME]] 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 [NAME] 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. [NAME] [[NAME]] also pointed out [[NAME]] 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. [NAME] comments [[NAME]] [NAME] does not provide any reasons for selecting UHF radio communications over other forms of wireless communications available as at May 2004. 622 [NAME] [NAME] favoured a non-rechargeable battery, but as [NAME] pointed out, whilst [[NAME]] may be a sensible and logical choice to employ in the case of a sensor-based solution buried underground, there are other [COMPANY] to a sensor-based solution. 623 As I have said, [NAME] [NAME] performed a similar exercise to [NAME] [NAME] in identifying the features of his [NAME] and comparing them to the integers in claims in the [NAME]. As with [NAME], [[NAME]] does not advance [NAME]'s case unless his underlying opinions are accepted. It may also be noted, as [NAME] pointed out, [[NAME]] [NAME] does not [NAME] claims 5, 9, 20, 25 or 27 of the First [NAME] and claims 5 and 21 of the [NAME] [NAME]. In addition, in his claims charts, he relies on features in Option 2 of his design solution even though he expressed a preference for [NAME] and would have implemented [[NAME]] option first. 624 In my opinion, [NAME] [[NAME]] evidence does not establish [[NAME]] the invention lacked an inventive step for the following reasons considered as a whole. 625 First, it is necessary to consider [NAME] [NAME] skills and experience. [NAME] [NAME] has skills and experience in [NAME], but he has never worked in designing a [NAME] infringement [NAME] and he did not know what technology was used in [[NAME]] field. Whether it is correct to characterise [NAME] [[NAME]] work with red light camera [COMPANY] for approximately one month before the [NAME] as a related field and to recognise some knowledge he had of the [NAME] [NAME], [NAME] [[NAME]] himself nevertheless accepts [[NAME]] he has had no experience in the field of [NAME] technology. These matters are relevant to the weight to be given to [NAME] [NAME] evidence (E I Du Pont de Nemours & Co v [NAME] & [COMPANY] [2005] FCA 892; (2005) 66 IPR 462 at [130] per [NAME]). 626 Secondly, [NAME] [NAME] makes no reference is his report to common general knowledge in the field of [NAME]. As I understand it, he is not put forward by [NAME] as part of a team with a member who has direct knowledge of [NAME] methods and of the common general knowledge operating in [[NAME]] field before and at the [NAME]. His expertise relevant to the problem is in [NAME] and, although the problem did not direct him to a sensor-based solution, it is unsurprising, as [NAME] put it, [[NAME]], 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 [COMPANY] or improvements to the existing methods identified by [NAME] [NAME]. None of the persons directly involved in the field of [NAME] who gave evidence before me — [NAME], [NAME] and [NAME] — gave evidence [[NAME]] as at the [NAME], they considered a sensor-based solution to overcome the existing problems. 627 Thirdly, it is unclear whether [NAME] [NAME] [COMPANY] his analysis to common general knowledge. His instructions invited him to have regard to (and only to have regard to) [NAME] he would have regularly considered (emphasis added) at the [NAME] and in his evidence he said he had regard to his knowledge as a citizen and observations as a [NAME] officer. Furthermore, his report indicates [[NAME]] he had some regard to material on the internet and it is unclear whether [[NAME]] material is part of the common general knowledge. 628 Fourthly, [NAME] [NAME] 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 [COMPANY]. In the case of the four architectures each involving a number of components, [NAME] advises [[NAME]] for some of these components, a number of interchangeable [COMPANY] 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 [NAME] detection and [NAME] response architecture". [NAME] [NAME] 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 [NAME] spaces" and he identifies two as the most viable in terms of cost, ease of installation and specificity in terms of detecting vehicles. [NAME] [NAME] inductive loops were large inductive loops cut into the road surface. As [NAME] 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 [NAME] observed in [APPELLANT] as distinct from the United States. [NAME] [APPELLANT] had not considered whether the inductive loop might be contained in housing along with other elements of his [NAME]. 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. [NAME] [NAME] preferred option was of an inductive proximity sensor because of, inter alia, lower installation costs and the fact [[NAME]] 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 [NAME] [[NAME]] 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 [[NAME]] 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 [NAME] went through before he reached his preferred solution. He identified four [COMPANY] and in his oral evidence, he said [[NAME]] as he worked through his report, it became apparent to him [[NAME]] there would be significant costs associated with the roadside installation of roadside controllers and it might be advantageous to have a [NAME] 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 [NAME] [NAME] pointed out, there are other relevant considerations for an electronics [NAME] such as the desired level of efficiency of [NAME] 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 [NAME] [NAME] said in [NAME]-examination when it was put to him [[NAME]] cutting into the road was a "very expensive solution", the notion of very expensive certainly means non-trivial costs, but beyond [[NAME]] one would consider economies of scale and [[NAME]] cost as against the cost and value of the entire [NAME]. 630 The different perspectives of costs savings which may be taken by an electronics [NAME] in approaching the choice of a preferred [NAME] is illustrated by [NAME] [[NAME]] evidence. He said [[NAME]] if he had been tasked with implementing one of [NAME] [NAME] [COMPANY], 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 [[NAME]] installation and maintenance costs and the physical space requirements for the overall [NAME] could be reduced by co-locating common sensor hardware with other [NAME] components such as display boards, wireless transceivers and power supplies. 631 Sixthly, there are difficulties and uncertainties with [NAME] [[NAME]] [COMPANY]. For example, he said [[NAME]] 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. [[NAME]] particular example would not produce a reliable indicator of infringement because one vehicle may leave the [NAME] 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. [[NAME]] is likely to be the case also in vehicle overstay detection and, as [NAME] [NAME] said if he was implementing [NAME] [NAME] [COMPANY], he would examine whether or not a fixed or permanent power source could be used to provide power to the sensors. Finally and significantly, [NAME] [NAME] preferred sensor is the inductive proximity sensor and he said [[NAME]] they had been in place for many years in the [NAME]. He said [[NAME]] there were some longer range sensors [[NAME]] 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 [[NAME]] 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 [NAME]-examination [[NAME]], although he did not know whether [[NAME]] was possible, "there were quite likely parts [[NAME]] could have done [[NAME]] but it would have required further research and selection to identify [[NAME]]". 632 Seventhly, [NAME] [[NAME]] 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 [[NAME]] he would have identified the magnetometer. I agree with [NAME]'s submission [[NAME]] the evidence as a whole indicates [[NAME]] [NAME]'s [COMPANY] required substantial further thought and experimentation and [[NAME]] gives rise to the possibility of trial and error, dead ends and the retracing of steps referred to by the High Court in [NAME] at [58]. 633 Finally, there is a matter for noting. I say [[NAME]] because if [NAME] [[NAME]] earlier opinions do not carry the day, the exercise he carried out in 2014 of comparing his solution with the integers in the [NAME] [NAME] and the similar exercise in 2020 in relation to the First [NAME] do not advance [NAME]'s case. [NAME] pointed out certain difficulties with his analysis in any event. There is nothing in [[NAME]] part of his report describing the fourth solution which sets out [NAME] [NAME] 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 [[NAME]] any of the sensors described could be used in any number of combinations to detect the presence of vehicles in a particular set of [NAME] spaces. It also emerged from [NAME]-examination [[NAME]] [NAME] did not state expressly in his report matters he assumed based on his knowledge. Furthermore, [NAME] [[NAME]] admitted in [NAME]-examination [[NAME]] there was no single place in his report where all of the integers in claim 1 of the [NAME] [NAME] (a method claim) are set out. 634 Taking all of these matters into account, I am not satisfied [[NAME]] has established [[NAME]] the invention disclosed lacks an inventive step. 635 The [NAME] would include both an electronics [NAME] and [NAME] with expertise and experience in the field of [NAME] before and at the [NAME]. The [NAME] would consider a range of options in addressing the problem, including but not [COMPANY] 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 [NAME] was led directly as a matter of course to a sensor-based solution, I am not satisfied [[NAME]] would have led to the invention. I have set out my reasons for concluding [[NAME]] [NAME]'s evidence does not establish [[NAME]] conclusion. I am not satisfied [[NAME]] the [NAME] 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 [[NAME]] the [NAME] would be led directly as a matter of course to the [NAME] 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 [NAME] opportunities, revenue opportunities and a reduction in the availability of on-street [NAME] for the general public. 638 The introduction of [NAME]'s [NAME] in 2005, which is an embodiment of the [NAME], resulted in a paradigm shift. As [NAME] [NAME] said, the [NAME] was so effective at the [NAME] [[NAME]] the [NAME] regarded it as a threat to the workforce. At the time the [NAME] was introduced to the [NAME], it generated a great deal of interest from [NAME]. Since the [NAME] was introduced in the [NAME], [NAME] and [NAME] have also released sensor detection [COMPANY] on the market and market their [COMPANY] in competition with [NAME] as an alternative to chalking. [NAME] said [[NAME]] he reported back to the Adelaide City Council on the [NAME] 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.

False Suggestion and Misrepresentation ([NAME]) 640 A [NAME], or claims in a [NAME], may be revoked if the [NAME], or the claims in the [NAME], were obtained by fraud, false suggestion or misrepresentation. Fraud is not alleged by [NAME] in this case and this ground of invalidity is based on false suggestion or misrepresentation. 641 I have held [[NAME]] claims 21–23 and 28–29 and the omnibus claims (30–32) of the First [NAME] extend to methods, apparatuses and [COMPANY] whereby vehicle overstay is determined either in the [NAME] or the [NAME]. In the event [[NAME]] the Court reaches [[NAME]] conclusion, [NAME] contends [[NAME]] those claims were obtained by false suggestion or misrepresentation. 642 There is no evidence [[NAME]] the [NAME] has complained or complains of the conduct identified by [NAME] and neither the Commissioner nor her delegate gave evidence in this proceeding. 643 [NAME]'s case is [[NAME]] the alleged false suggestion or misrepresentation was made in 2007 by [NAME]'s [NAME], [NAME], in connection with the process of examination by [NAME] [APPELLANT] of application no 2005243110 and in response to novelty and inventive step objections raised by [NAME] [APPELLANT], having regard to WO 2002/06,3570 A2 ([COMPANY].) ([NAME]). 644 The following background is relevant to this ground. US [NAME] No 10/072,808 ([NAME]) published on 15 August 2002 and [NAME] are based on the same US provisional application 60/267,059 filed on 7 February 2001 and contain the same disclosure. 645 [NAME] was part of [NAME]'s pleaded lack of novelty case in this proceeding and was also advanced as part of (either common general knowledge or [NAME] failing within s 7(3) of the Act) [NAME]'s pleaded lack of inventive step case in this proceeding. [NAME] has abandoned its novelty case and did not place any reliance on [NAME] 1 in its inventive step case. As I understand one submission made by [NAME], it is [[NAME]] must be taken to have accepted [[NAME]] by abandoning reliance on [NAME] and, therefore, [NAME] which contains the same disclosure, there was and is no lawful objection to the First [NAME] on the basis of [NAME] and [[NAME]], in those circumstances, whatever its [NAME] said to [NAME] [APPELLANT] was and is immaterial. The submission is [[NAME]] it cannot be shown as a matter of fact [[NAME]] anything said by [NAME]'s [NAME] to [NAME] [APPELLANT] was a material inducing factor in the obtaining of the [NAME] by [NAME]. Another way the submission was put was to say [[NAME]] if there was a representation, it was [[NAME]] the claimed invention was novel and involved an inventive step compared with [NAME] and [[NAME]] bearing in mind [NAME] and [[NAME]] involve the same disclosure and reliance on [NAME] has been abandoned, the representation has not been shown to be false. For reasons which follow, I do not need to decide if this submission is correct. 646 The relevant communications between [NAME] and [NAME] [APPELLANT] during the examination process were as follows. 647 On 16 February 2007, [NAME] [APPELLANT] advised [NAME] in writing [[NAME]] the application had been examined and it had been determined [[NAME]] there were lawful grounds for objection to the application. Those grounds included a ground [[NAME]] claims 1, 2, 7, 9, 11, 12, 14–16, 19–22 and 24–27 were not novel and did not involve an inventive step, having regard to the prior art document which was [NAME]. 648 On 24 May 2007, [NAME] responded to [NAME] [APPELLANT] by claiming [[NAME]] the claimed invention was novel and involved an inventive step when compared to [NAME] because in the case of [NAME], [NAME] violations are identified by wireless sensors in conjunction with a central computer, server or network whereas in the case of the claimed invention: … instances of overstay violation are determined solely by the subterraneous [NAME]. [[NAME]] is, no central computer, service, network or any above-ground apparatus is needed to identify violations as instances of overstay. 649 On 7 June 2007, [NAME] [APPELLANT] provided a [NAME] examination report to [NAME] with respect to the application. The report stated [[NAME]] the invention defined in claims 1, 2, 7, 9, 11, 12, 14, 19֪–22 and 24–27 was not novel and lacks an inventive step compared with the prior art document [NAME] "for the same reasons as given in the first report". 650 On 2 October 2007, [NAME] responded to the [NAME] examination report and asserted [[NAME]] the claimed invention was novel and involved an inventive step and asserted [[NAME]] "the subterraneous [NAME] of the claimed invention is battery-powered and wirelessly transmits data relating to identified instances of [NAME] overstay" and the cited reference fails to disclose, or even suggest, [[NAME]] an overstay duration of a vehicle in a [NAME] space is determined and stored by a [NAME]. 651 On 8 November 2007, [NAME] [APPELLANT] provided a third examination report in which it no longer advanced an objection to the application on the basis of a lack of novelty or inventive step. 652 On 16 November 2007, [NAME] [APPELLANT] advised [NAME] [[NAME]] the application and complete specification were accepted and, on 13 March 2008, [NAME] [APPELLANT] advised [NAME] [[NAME]] a [NAME] had been granted in respect of the application. 653 [NAME] contends [[NAME]] but for the representations made by [NAME] in their responses to [NAME] [APPELLANT] dated 24 May 2007 and 2 October 2007 respectively, [NAME] [APPELLANT] would not have accepted application no 2005243110. 654 The authorities which deal with the ground [[NAME]] a [NAME] or claims in a [NAME] have been obtained by false suggestion or misrepresentation include Re [NAME]'s [NAME] [1907] 24 RPC 733; [COMPANY] v [COMPANY] (1990) 26 FCR 197; [NAME] [APPELLANT] [COMPANY] v [NAME] Co LLC [2008] FCAFC 82; (2008) 77 IPR 449 ([NAME]); [COMPANY] v [NAME] [COMPANY] [2000] FCA 1349; (2000) 106 FCR 214 ([NAME]); and [COMPANY] v [COMPANY] (No 3) [2018] FCA 1204; (2018) 135 IPR 13. It will be sufficient for me to refer to [NAME] and [NAME]. 655 The "but for" test is not the test of causation in this area of the law. It is sufficient if the suggestion or representation materially contributed to the Commissioner's decision to grant the [NAME], or was a material inducing factor leading to the grant ([NAME] at [82]). 656 The position taken by the Commissioner is relevant in considering this ground of invalidity. In [NAME], the Court said (at [83]): Bearing in mind [[NAME]] the grant of a [NAME] is a right in rem, the Commissioner could be expected to take a position if a misrepresentation did in fact play a part in the decision to grant a [NAME] and it is a relevant factor [[NAME]] the Commissioner chooses not to give evidence ([NAME] & [COMPANY] v [NAME] [COMPANY] (2000) 106 FCR 214 at 244-245). In the absence of such evidence, it is for the Court to make a finding, based on the evidence before it. In the absence of explicit evidence [[NAME]] the Commissioner, or the Commissioner's delegate, was in fact misled, it may nevertheless be inferred [[NAME]] a representation in fact contributed to the decision to grant a [NAME], if the representation was objectively likely to contribute to such a decision and the [NAME] was in fact granted (see [COMPANY] v [NAME] [COMPANY] [2004] FCA 1179 at [2], and [NAME] v [COMPANY] (2005) 66 IPR 298 at 321). 657 Assuming fraud is not present and, as I have said, fraud is not alleged in this case, it is not sufficient to make out the ground of false suggestion or misrepresentation to prove simply [[NAME]] a false suggestion or misleading statement was made and nothing else. [[NAME]] made this clear in [NAME] in the following passages (at [135]–[137]): 135 The ground of false suggestion or misrepresentation must involve some misleading or deception of the Commissioner or the Commissioner's delegate, being the person who makes the grant. To establish the ground, there must be a finding [[NAME]] the Commissioner or the Commissioner's delegate was in some way misled or deceived by the suggestion or representation in question and [[NAME]] being so misled or deceived contributed to or caused the decision to grant the [NAME]. 136 The Commissioner was a party to the proceeding but took no substantive part in the proceeding. The Commissioner may have taken the view [[NAME]] [NAME] was prosecuting the alleged grounds of invalidity with sufficient vigour for the Commissioner not to be involved. [NAME] adduced no evidence as to the way in which the alleged false suggestions or misrepresentations operated on the decision making process of the Commissioner. Where it is alleged [[NAME]] a [NAME] was obtained on or by false suggestion or misrepresentation, it is relevant, although not decisive, [[NAME]] the Commissioner has made no complaint about being misled or deceived. 137 In the absence of an allegation of fraud, which involves an examination of the state of mind of the [NAME] applicant, it is not sufficient to make out the ground of false suggestion or misrepresentation to prove simply [[NAME]] a false or misleading statement was made and nothing else. [[NAME]] is to say, even if a suggestion or representation is shown to be false or misleading, [[NAME]], of itself, is not sufficient reason to draw an inference [[NAME]] the suggestion or representation contributed to the decision to grant the [NAME]. 658 A submission about the meaning and effect of a piece of prior art will not necessarily involve a false suggestion or misrepresentation even where it transpires [[NAME]] it was wrong unless, it seems, it can be said [[NAME]] there was no basis for the submission ([NAME] at [91]). [[NAME]] in [NAME] made it clear [[NAME]] where good faith is not in issue, it is inappropriate to apply a presumption [[NAME]] the misrepresentation actually misled. [[NAME]] said (at [92]): … We think it is relevant also to bear in mind [[NAME]] the examiner must be taken to have become thoroughly familiar with the specification and claims the [NAME] of [NAME] application; the examiner should also be taken to have become familiar with at least the abstract but, we should think, more likely the complete specification, of the [NAME]. A reaction more likely, we should think, than immediate acceptance of what was said on [NAME] behalf was a further consideration, by the examiner, of both. After all, where good faith is not in issue it is inappropriate to apply any presumption [[NAME]] the misrepresentation actually misled. … 660 The onus is on [NAME] to establish this ground of invalidity. Even if it be assumed [[NAME]] there was a false suggestion or misrepresentation, there is no presumption [[NAME]] the Commissioner was misled. It is true [[NAME]] a sufficient causal link may be inferred if the representation was objectively likely to contribute to the grant of the [NAME] and the [NAME] was, in fact, granted. However, I am not satisfied [[NAME]] in this case an inference of a sufficient causal link should be drawn, having regard to the course of the correspondence. For example, as [NAME] pointed out in its written submissions, there were a number of bases upon which the objections to the First [NAME] did not succeed, not just the scope of claims 21–23 and 28–32. The [NAME] letter of 24 May 2007 focussed primarily on claims 1, 5, 10, 11, 15, 16 and 26 and the letter of 2 October 2007 focused primarily on claims 1, 10 and 11. 661 The false suggestion and misrepresentation ground of invalidity is rejected.

Claims 21–23 and 28–32 of the First [NAME] lack clarity and fail to define the invention 662 [NAME]'s case is [[NAME]] if claims 21–23 and 28–32 in the First [NAME] encompass a [NAME], apparatus or method which does not require the [NAME] to make the overstay determination, then the claims are not clear and do not define the invention because they do not set out how the identification of overstay is to be determined. Section 40(3) provides, inter alia, [[NAME]] claims in a complete specification must be clear and s 40(2)(b) provides [[NAME]] the claim or claims must define the invention. 663 [NAME] pleaded an additional ground of lack of clarity in relation to claim 29 and [[NAME]] related to the reference in the claim to a wake-up signal, but [[NAME]] ground was not pursued in closing submissions. 664 [NAME] submits [[NAME]] it is common ground between the [NAME] [[NAME]] the specification provides no [NAME] about how the identification of overstay is to be determined. For example, [NAME] said [[NAME]] the difficulty with overstay being determined by or in the [NAME] is [[NAME]] this possibility "is not discussed or described anywhere else, and there is insufficient [NAME] about how a [NAME] configured in this way works". For his part, although [NAME] [[NAME]] stated in his oral evidence [[NAME]] the [NAME] would make the decisions in exactly the same way as the [NAME] using the same equations, he agreed [[NAME]] there was "no discursive account of how [[NAME]] might be done using the [NAME]". 665 [NAME] submits [[NAME]] insofar as [NAME] relies on the omnibus claims which use the words "substantially as herein described", they will generally be restricted to the preferred embodiment or an embodiment substantially the same as the preferred embodiment and [[NAME]] difficulties in meeting the requirement of clarity may arise where more than one preferred embodiment is described in the specification ([NAME] v [NAME] at [29] and [31]). 666 It is important to remember [[NAME]] a lack of clarity is concerned with the certainty surrounding the scope of the [NAME] claimed. A [NAME] must be able to ascertain whether what he or she proposes to do falls within the ambit of the relevant claim. There is a further relevant point and [[NAME]] is [[NAME]] a claim will not fail for lack of clarity if it identifies a workable standard suitable to the intended use. I am unable to see how it can be said the claims lack clarity. Once construed in the manner I have described, there would be no difficulty for the [NAME] to understand the boundaries of the claims. 667 A similar conclusion follows in the case of the ground of alleged invalidity [[NAME]] the claims do not define the invention. In [NAME] v [NAME] [COMPANY] [1972] RPC 457, the Court of Appeal said (at 515–516): It is clear in our judgment [[NAME]] the question whether the [NAME] has sufficiently defined the scope of his claims is to be considered in relation to the facts of each case, [[NAME]] allowance is to be made for any difficulties to which the circumstances give rise, and [[NAME]] all [[NAME]] is required of the [NAME] is to give as clear a definition as the [NAME] matter admits of. It is also clear in our judgment [[NAME]], while the court is to have regard to all the relevant facts, the issue of definition is to be considered as a practical matter and little weight is to be given to puzzles set out at the edge of the claim which would not as a practical matter cause difficulty to a [NAME] wishing to satisfy himself [[NAME]] he is not infringing the [NAME]. We accept also [[NAME]] definition of the scope of a claim is not necessarily insufficient because cases may arise in which it is difficult to decide whether there has been infringement or not provided the question can be formulated which the court has to answer in deciding the issue of infringement. 668 A lack of definition will not be established unless a claim is "incapable of resolution by a [NAME] by the application of common sense and common knowledge" ([COMPANY] v [NAME] (1996) 35 IPR 643 at 666; [NAME] v Queen's University at Kingston [2005] FCA 344; (2005) 216 ALR 41; (2005) 64 IPR 314 at [117] per [[NAME]] J). In my opinion, [[NAME]] cannot be said of the claims in this case. 669 The lack of clarity and lack of definition grounds of invalidity are rejected.

Conclusions 670 The [NAME] conclusions with respect to the infringement issues in this case are as follows: (1) The [NAME] 1 (and [NAME] 2) infringes claims 2, 3, 4, 5, 11, 12, 13, 21, 22, 28 and 29 of the First [NAME] and claim 26 of the [NAME] [NAME] and the contention by the first [NAME] [[NAME]] [NAME] 1 does not involve the use of a wake-up signal or provide for data to be transmitted when a [NAME] is detected is rejected; (2) Claim 21 of the First [NAME] includes a [NAME] in which vehicle overstay is determined by the [NAME]; (3) The acts of service, maintenance, firmware upgrade and/or other assistance do not give rise to liability, assuming as I take to be the case, those acts were performed pursuant to lawfully binding contracts entered into before the beginning of the limitation period because there would be no power to prevent the use and no procuring, inducing or [NAME] in concert in the relevant sense; (4) (a) With respect to the applicant's claim for additional damages against the first [NAME], an award of additional damages is justified with respect to infringements after the decision in [NAME] 2013, but only insofar as the infringements involve [NAME] 1 and [NAME] 2; and (b) With respect to the applicant's claim for additional damages against the [NAME] [NAME], the claim is dismissed. These conclusions must be read in the context of these reasons and be reflected in the [APPELLANT] to be made. 671 The first [NAME]/[NAME]-claimant's [NAME]-claim is to be dismissed. 672 The applicant is to bring in draft minutes of order reflecting the conclusions in these reasons. I will then hear from the parties as to the terms of the [APPELLANT]. I certify [[NAME]] the preceding six hundred and seventy-two (672) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Besanko.

Associate: Dated: 8 March 2023