[111] There is further discussion of this capacity at 1617 of the specification, where it is stated:
"There are two basic conditions that are dealt with at the switch with respect to the banking interface. The first is the
traditional banking process where either the banking card and its PIN are available or there is a preregistered
relationship between the customer and his banking details and the second is where the transaction has already been
authorised by a chip card. The details of the two options are:
Where the banking card or a preregistered relationship exists, the switch will format a payment request to the bank.
Where the transaction has already been approved by a chip card the message that is constructed for transmission to
the bank will not be an approval request but rather information for accounting purposes."
[112] From the above, therefore, it is evident that a database is integral to the process. The password referred to
in claim 4 of the patent in suit in connection with integer (b) of claim 1, as a means of remote identification, is
used to verify the phone number or the subscriber's details. Because the customer in the Miller patent has a
preregistered relationship, it is selfevident that subscriber details comprising the phone number and banking
details will be stored in a database on the switch. As appears from the description of the Computer Managing
Means, the data is necessary for banking purposes and the sale of the prepaid values, and hence "the switch
also has extensive journalising and reconciliation capabilities". Those capabilities would be nothing short of
redundant were they not to operate upon and in relation to a subscriber database including a plurality of
subscribers and a method of verifying subscriber details.
[113] For those reasons, I am persuaded that integer (c) of claim 1 and integer (b) of claim 15 of the patent in suit
are disclosed in the Miller patent. Once again, bearing in mind that the plaintiff has restricted his defence to
the counterclaim of anticipation by the Miller patent to the nondisclosure of these two integers, a finding that
they are indeed present is in effect a finding that the same or substantially the same process (method and
system) is identifiable or perceptible and hence made known and part of the state of the art immediately
before the priority date of the claims of the plaintiff's invention.
Anticipation by the EDS patent
[114] The field of the invention of the EDS patent (priority date 7 June 1997) is set out in its specification to be:
"The present invention relates generally to prepaid phone services, and more particularly to a system and method for
electronic dispensing of a receipt reflecting prepaid telephone services to be used by customers in place of correct
prepaid telephone cards, including electronic debiting of an account for costs associated therewith."
Page 417 of [2009] 1 All SA 381 (T)
[115] The plaintiff 's position, as stated in his rule 36(9)(b) notice and confirmed in his testimony, is that the EDS
patent does not provide for a remote identification of subscribers or a method including verifying subscriber
details with reference to the subscriber details stored in a subscriber database. Mr Puckrin submitted that the
EDS patent has specific, restricted application to vending machines. In support of this, he relied on the
abstract summary of the EDS patent. In terms of regulation 31 of the Patent Regulations promulgated by
Patents Act 57 of 1978 (GG 6247 GN R2 470, 15 December 1978) the abstract should not be used to interpret
the scope of the claims of a patent for the purpose of deciding the issue of an infringement. There is perhaps
less justification for ignoring it when dealing with the question of anticipation and the prior state of the art,
which includes all information made available to the public. The abstract reads as follows:
"A system and method for electronic purchase of prepaid telephone services is provided. An initiating terminal (110)
receives input of a customer's request to purchase a specified amount of prepaid telephone services and receives
input of the customer's designation of a financial account from which to electronically debit the price of such purchase.
A central terminal (140) receives these inputs from the initiating terminal to, in turn, print on a receipt and provide to
the customer. This receipt is then used instead of a telephone card to obtain telephone services up to the specified
amount. Such receipt may also detail instructions and an authorization number, such as a personal identification
number or PIN, to initiate the prepaid telephone service. The system and method of the present invention also
preferably transfers the funds from the appropriate demand or credit account to pay for the purchased telephone
services. An additional, separate Regulation Etype receipt is preferably also printed reflecting the financial
transaction."
[116] What is contemplated in the abstract is an initiating terminal receiving input of a customer's request to
purchase a specified amount of prepaid value. However, it also receives input of the customer's designation of
a financial account from which to electronically debit the price of such purchase. The most apparent point of
difference between the EDS patent and the patent in suit lies in the former providing for the print out of an
enabling code, whereas the preferred form of providing the enabling code in the patent in suit seems to be in
telephonic form either in a voice message or SMS. The difficulty for the plaintiff, though, is that he did not put
integers (d) or (e) of claim 1 in issue in relation to the EDS patent. Be that as it may, justice between the
parties requires me to consider also whether integers (d) and (e) of claim 1 are disclosed in the EDS patent.
[117] Turning first to integer (b) of claim 1 of the patent in suit. On page 7 of the EDS patent we find the following
description:
"For the sake of the following discussion, and unless otherwise stated, initiating terminal 110 will be an ATM. It should
be understood that any of the initiating terminals ATM 110, personal computer 115, screen telephone with printing
mechanism 120, or television with printing mechanism 125 could have been used instead. Moreover, initiating
terminal 110 may be physically situated anywhere including a convenience store, a grocery store, a post office, a
branch of a financial institution, a mall, or other location."
By the same token, given that the invention is not confined to an ATM, the location could also be at the home
or office of a subscriber and, these days, even in a motor vehicle.