CHANCERY DIVISION
PATENTS
COURT
Strand, London, WC2A 2LL | ||
B e f o r e :
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AEROTEL LIMITED (a company incorporated under the laws of Israel) |
Claimant | |
- and - |
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(1) TELCO HOLDINGS LIMITED (2) TELCO GLOBAL DISTRIBUTION LIMITED (3) TELCO GLOBAL LIMITED |
Defendants |
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Midway House, 27/29 Cursitor Street, London EC4A 1LT.
Telephone No:
020 7405 5010. Fax No: 020 7405 5026
(instructed by
Messrs. Bristows, London WC2) for the Claimant.
MR. ADRIAN
SPECK
(instructed by Messrs. Linklaters, London WC2) for the Defendants.
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Crown Copyright ©
Mr. Justice Lewison:
"From these sources I derive the following elementary propositions: (a) it is for the applicant for summary judgment to demonstrate that the respondent has no real prospect of success in his claim or defence as the case may be; (b) a 'real' prospect of success is one which is more than fanciful or merely arguable; (c) if it is clear beyond question that the respondent will not be able at trial to establish the facts on which he relies then his prospects of success are not real; but (d) the court is not entitled to an application for summary judgment to conduct a trial on documents without disclosure or cross-examination."
"Further, toll or long distance telephone calls are used more and more as people travel more and conduct business on a less localized basis. Presently long distance calls can be made by charging the call to a local telephone such as for example to a telephone in a hotel room. The long distance call can be made by instant payment such as for example when using a public payphone. The long distance call can be made by charging the call to the calling party's home or business telephone or by using a telephone company credit card number. The long distance call can also be made as a 'collect call' where the called party has to accept the call and is then billed the time and charges for the call.
Each of these present day methods for making and paying for toll calls has significant detriments. For example when a call is charged to hotel room telephones the hotel adds its charges to the call thereby disproportionately increasing the cost of the call.
It is extremely difficult to make long distance calls from public payphones since it requires large amounts of the coins – not ordinarily carried about – especially when touring or on a business trip.
The use of credit card calls often results in mistaken charges billed to the telephone credit card number. Further, to obtain a telephone credit requires credit checks and the establishment of credit, often almost impossible to acquire.
Salesmen similarly should be able to call their home offices from a customer's telephone without having the call charged to the customer's telephone which is inconvenient or to their home office phone with the previously mentioned difficulties and the added cost.
Thus there is a long felt need for a system which enables making telephone calls including local or toll calls conveniently, inexpensively and from any telephone. Thus, if a party wants to make a call, be it a local call or a long distance national or international call, he should be able to accomplish the call from the nearest available telephone."
"According to a broad aspect of the invention, a telephone system for facilitating a telephone call from any available telephone station, comprising: means for coupling a calling party station to a special exchange; memory means in the special exchange for storing customer special codes and prepayment information individual to each customer; means for verifying the calling party responsive to a code transmitted from the calling party station to the special exchange so as to verify that the code matches the special customer code in the memory means and the calling party has unused credit; and means for connecting said calling party station to a called station responsive to the verification."
"The customer, such as a regular telephone user or a traveller, acquires a special code, a credit amount and the telephone number of the special central offices by either a cash or credit card payment. The code, the credit amount and telephone numbers may be acquired, for example through the regular credit card companies and charged to the acquirer's credit card. Alternatively, the credit amount, the telephone numbers and identifying code can be purchased at sales points such as in airports, hotels, rent-a-car stations and the like. The amount paid is credited to the acquirer for use against future telephone calls. The credited amount is stored in a memory at the special central office along with the special code."
"Subsequently thereto, the acquiring party wishes to make a telephone call which may be a local call or a toll call. He uses the nearest available telephone, removes the handset and dials a special central office ….. The telephone in this example is a private station. When he is connected to the special central office ….. a special dial tone is sent from the special exchange to a calling station. When the calling party hears the special dial tone indicating that the computer at the exchange is ready for him he dials the identifying code and the called number he wants ….. The computer at the special exchange checks the code and registers the desired called number.
If the code number is a genuine code with credit i.e. valid ….. a regular dial tone is sent to the calling party station as he is connected to the regular telephone system. The computer at the special exchange routes the call on the most economical available lines, according to prior arrangements with long distance line suppliers if it is a toll call."
Again, not all of that appears in the claim itself.
"1. A method of making a telephone call from any available telephone, comprising: obtaining a special code by making a prepayment; inserting the prepayment in a memory in a special exchange and being allocated to the special code in the memory for use in verifying a calling party call; dialling the special exchange when a telephone call connection is desired; inputting the special code for verification; inputting the number of called party; verifying at the special exchange by checking the special code and comparing the prepayment less any deductions for previous calls in the memory with the minimum cost of a call to the called party station; connecting the called and calling parties' stations in response to said verification; monitoring the remaining prepayment less deductions for the running cost of the call; and disconnecting the call when the remaining prepayment has been spent by the running cost of the call."
That, then, is a description of what is claimed by the patent.
"(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
"(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information".
"This was confirmed in the Hitachi case. The alleged invention was an automatic auction carried out on a computer system. A problem that arises when auctions are carried out on-line is that bids get delayed in transmission and so out of synchronisation. According to Hitachi's idea you solve the problem as follows. The auction starts by asking the bidders to transmit two prices down the line, one the 'desired price' and one the 'maximum price'. After this initial phase the auction is automatic and does not require the bidders to follow the auction on-line. They just get the end-result: who won. The result is calculated by the computer by setting a price and successively lowering it (known as a 'Dutch auction') until it reaches the level of the highest 'desired price', as already sent in by the various bidders, of course. In the event of a tie the computer increases the price until only the bidder having the highest 'maximum price' is left. He is the winner.
"The board held that the first thing to do is to ask if the invention is excluded by Art. 52(2) without any knowledge of the prior art. If it can be seen that there are any 'technical' means at all – and those could include even pen and paper – the first stage is successfully passed. You have an 'invention'. For this purpose there is no difference between an apparatus claim and a method claim (to that extent disagreeing with Pension Benefit). The 'technical contribution' approach, followed by our Court of Appeal in Merrill Lynch, Gale and Fujitsu, was expressly rejected.
"The next stage is to consider whether the invention was new and, if so, was obvious, 'by taking account of only those features which contribute to a technical character'. In Hitachi the Board held that the invention was obvious because the computer-technology features were obvious and the 'clever' part (if any) was the way of doing the auction, which pertained not to what was 'technical' but to a method of doing business.
"That Hitachi's idea overcame a technical problem that afflicted on-line auctions (lack of synchronicity) was irrelevant, said the Board, because the problem was solved by business not technical means."
"I wonder whether that concept is novel in the world of gaming. But assume all the same that the applicants' idea is new and is not obvious. Under what description is it new and not obvious? Under the description 'methods of doing business'. It is not patentable. In my judgment this can be nothing more than an innovation in a method of doing business."
"…one should not confuse the scope of the contribution on the one hand with the area in which the contribution is made on the other."