Van Wyk v First National Bank of Southern Africa Limited
| Jurisdiction | South Africa |
| Judge | Ranchod J |
| Judgment Date | 07 June 2016 |
| Docket Number | 2007/02230 |
| Court | Court of the Commissioner of Patents |
| Hearing Date | 22 March 2016 |
| Citation | 2016 JDR 1045 (COP) |
Ranchod J:
The plaintiff issued summons on 15 December 2014 alleging that the defendant had breached a South African Patent No. 2007/02230 of which she is the patentee. The patent is entitled 'A method and a system for reporting the results of a game of chance' (the patent).
2016 JDR 1045 p2
Ranchod J
The defendant filed a notice of intention to defend and thereafter the action was withdrawn on 4 February 2015 with a tender for the wasted costs.
A fresh summons was issued on 10 February 2015. In view of the notice of intention to amend the particulars of claim and the objection to it by the defendant it is necessary to set out the particulars of claim and the intended amendments.
The particulars of claim provide, inter alia, as follows:
The Plaintiff is, and has at all material times hereto been the patentee of South African Patent No, 2007/02230 entitled "A method and a system for reporting the results of a game of chance" (hereinafter "the patent").
The patent is, and has at all material times, been valid and in full force and effect.
A copy of the complete specification of the patent is attached hereto marked Annexure "MVW1".
From a date which is at present unknown to the Plaintiff, the Defendant had infringed and continues to infringe one or more of claims in the patent by using and/or exercising in the Republic of SA a method and/or a system and/or a device which fall within the scope of claims 1 to 29 of the patent.
In support of the allegation made in paragraph 6 above, the Plaintiff will rely on the Defendant's LOTTO offering on cell phone applications, Automated Teller Machines and online banking channel Internet banking web site of an interactive cell phone and computer based system for the reporting of the results of a LOTTO game as evident in the Defendant's FNB CELLPHONE BANKING NATIONAL LOTTERY PRODUCT RULES, Annexure "MVW2", and the following Internet web site extracts:-
FNB Internet Banking Web Site, Annexure "MVW3", dated 7 October 2014;
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Ranchod J
FNB MOBI Web Site, Annexure "MVW4", dated 7 October 2014;
SA National Lottery Web Site, Annexure "MVW5", dated 7 October 2014.
As a result of the Defendant's infringement of the patent, the Plaintiff has suffered and continues to suffer damages in an amount which she is at present unable to quantify.
The Plaintiff apprehends upon reasonable grounds that the Defendant will not desist from its infringement of the patent unless restrained by an order of this honourable court.'
(The annexures have been omitted].
The defendant, once again, entered appearance to defend on 16 April 2015.
The plaintiff thereafter filed a notice of intention to amend the particulars of claim on 1 July 2015 as follows:
By the amendment of paragraph 6 as indicated herein:
From a date which is at present unknown to the Plaintiff, the Defendant has infringed and continues to infringe one or more of claims in the patent by using and/or exercising in the Republic of SA a method and/or a system and/or a device which fall within the scope of claims 1 to 6, 24 to 27 and 29 to 31 of the patent, hereinafter referred to as the "Defendant's Lotto Offering".
By the addition of a new paragraph 7 after amended paragraph 6:
Specifically, the Defendant's Lotto Offering provides at least a system as claimed in claim 1 of the patent in suit in that it provides:
A system for reporting the results of a game of chance, the system including:
7.1.1.
a message arrangement operable to send to a mobile communication device an electronic application message which
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Ranchod J
includes an application operable to trigger the generation of an interactive user interface on the mobile communication device
7.1.2.
a request receiving arrangement operable to receive an electronic request message which includes information received via the user interface about a particular entry played in the game of chance; and
7.1.3
a comparator operable to compare the particular entry to the results of the game of chance, to establish the performance of the particular entry in the game;
7.1.4
the message arrangement further being operable to send and electronic result message indicative of the performance of the particular entry in the game of chance.
By the addition of a new paragraph 8 after new paragraph 7:
Furthermore, the Defendant's Lotto Offering provides at least system as claimed in claim 24 of the patent in suit in that it provides:
A method of reporting the results of a game of chance, which method includes:.
8.1.1
sending to a mobile communication device an electronic application message which includes an application operable to trigger the generation of an interactive user interface on the mobile communication device.
8.1.2
receiving an electronic request message which includes information received via the user interface about a particular interest played in the game of chance:.
8.1.3
comparing the particular entry to the results of the game of chance to establish the performance of the particular entry in the game; and.
8.1.4
sending an electronic result message to the source of the electronic request message which is indicative of performance of the particular entry in the game of chance.
By the addition of new paragraph 9 after new paragraph 8:
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Ranchod J
In particular, the Defendant's LOTTO offer includes an interactive cell phone-based system for the reporting of the results of a LOTTO game, which has the following features:-
a consumer subscribing to FNB banking services would download a cell phone application from the FNB website which, when accessed by that consumer, generates an interactive user interface on the cell phone screen:
that user interface enables the consumer randomly to choose a sequence of LOTTO numbers or to enter such a sequence manually:
the LOTTO number sequence and certain data related and unique to the consumer and the LOTTO number sequence entry are then forwarded by the consumer via a SMS cell phone message to a receiving database:
that receiving database is configured to compare and match the number sequence forwarded by the consumer with stored historic sequences of winning numbers of various LOTTO draws to determine whether or not the number sequence forwarded matches any particular sequence of winning numbers:
the result of that comparison and matching exercise by the receiving database is then returned to the consumer's cell phone via a SMS with a "no win" or "win" message, and if the message is a "win", with a further notification that the winnings would be deposited into the consumer's FNB bank account within a given period of time.
By the addition of new paragraph 10 after new paragraph 9:
The Defendant's LOTTO offering thus infringes claims 1 and 24 of the patent.
By the addition of new paragraph 11 and 12 after new paragraph 10:
The Defendant's LOTTO offering provides for the forwarding of an SMS to the FNB receiving database which SMS can comprise one or more LOTTO number sequences which are then compared and matched with sequences of winning
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Ranchod J
numbers at the receiving database; include an identification code or reference number uniquely associated with each particular SMS forwarded to the receiving database; that the typical LOTTO number sequence entered would comprise six double digit numbers, and that the receiving database is configured to interrogate the LOTTO database itself for the purpose of comparing and matching entries with cached historical winning number sequences.
That being the case, the FNB LOTTO offering also infringes claims 2, 3, 4, 5, 6, 25, 26, 27, 29, 30 and 31 of the patent.
By renumbering paragraph 7 as paragraph 13 and amending same as indicated herein to reference paragraphs 6 to 12, the remainder of this paragraph remaining unchanged;
In support of the allegation made in paragraphs 6 to 12 above, ..."
By renumbering all other paragraphs accordingly.'
The defendant filed a Notice of Objection to the proposed amendments in terms of which eight objections were raised. They are:
THE FIRST OBJECTION
It is alleged, in paragraph 6 of the Particulars of Claim once amended (hereinafter reference is made to "new paragraph") that the Defendant infringes the Plaintiff's patent-
"... by using and/or exercising in the Republic of SA a method and/or system and/or device which fall within the scope of claims 1 to 6, 24 to 27 and 29 to 31 of the patent..."
A device does not fall within the scope of claims 1 to 6, 24 to 27, and 29 to 31 of the patent.
Accordingly, the allegations in new paragraph 6 are vague and embarrassing, and the Defendant is prejudiced in pleading thereto as a result.
THE SECOND OBJECTION
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Ranchod J
In her Particulars of Claim as they presently stand, the Plaintiff pleads (in paragraph 6) that the Defendant infringes the Plaintiff's patent:-
"by using and/or exercising in the Republic of SA a method and/or system and/or a device which fall within the scope of Claims 1 to 34 of the patent."
Claims 1 to 34 contemplate three different inventions, including a device (in claims 22 and 23).
In the absence of:-
an identification by the Plaintiff of the essential integers of the allegedly infringed claims; and
...
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