Burley J – one of the judges in the Full Court’s Rokt ruling – has upheld Aristocrat’s appeal and ruled that four of its innovation patents for electronic gaming machines (EGMs) were manners of manufacture and not mere schemes or rules for a game.
The parties charaterised claim 1 of the 2016101967 patent as having 12 integers:
A gaming machine comprising:
(1.1) a display;
(1.2) a credit input mechanism operable to establish credits on the gaming machine, the credit input mechanism including at least one of a coin input chute, a bill collector, a card reader and a ticket reader;
(1.3) meters configured for monitoring credits established via the credit input mechanism and changes to the established credits due to play of the gaming machine, the meters including a credit meter to which credit input via the credit input mechanism is added and a win meter;
(1.4) a random number generator;
(1.5) a game play mechanism including a plurality of buttons configured for operation by a player to input a wager from the established credits and to initiate a play of a game; and
(1.6) a game controller comprising a processor and memory storing (i) game program code, and (ii) symbol data defining reels, and wherein the game controller is operable to assign prize values to configurable symbols as required during play of the game,
(1.7) the game controller executing the game program code stored in the memory and responsive to initiation of the play of the game with the game play mechanism to:
(1.8) select a plurality of symbols from a first set of reels defined by the symbol data using the random number generator;
(1.9) control the display to display the selected symbols in a plurality of columns of display positions during play of a base game;
(1.10) monitor play of the base game and trigger a feature game comprising free games in response to a trigger event occurring in play of the base game,
(1.11) conduct the free games on the display by, for each free game, (a) retaining configurable symbols on the display, (b) replacing non-configurable symbols by selecting, using the random number generator, symbols from a second set of reels defined by the symbol data for symbol positions not occupied by configurable symbols, and (c) controlling the display to display the symbols selected from the second set of reels, each of the second reels comprising a plurality of non-configurable symbols and a plurality of configurable symbols, and
(1.12) when the free games end, make an award of credits to the win meter or the credit meter based on a total of prize values assigned to collected configurable symbols.
No doubt oversimplifying, it seems the “clever” aspect of the patent was the use of a combination of configurable symbols and non-configurable symbols in which the display of a pre-determined number of configurable symbols on a base reel triggered free or bonus games. The configurable symbols were retained in the “free” game, while the non-configurable symbols were replaced with symbols from a second set of “reels”.
On the appeal, the Commissioner’s primary argument was that the claims were just claims to “a generic computer implementation”, leaving the hardware and software uncharacterised where the only features that distinguished the claimed invention from previous EGMs were the scheme or rules of the game. Thus, at  Burley J summarised the Commissioner’s submission:
integers 1.1 to 1.6 reflect the components of an EGM, including hardware (for example a display) and software (for example a random number generator) and some that are a combination of both (for example a game controller comprising a processor and memory). These were all standard components of EGMs.
Integers 1.7 to 1.12 deal with the conduct of the game and amount to a scheme or set of rules for doing so.
Amongst other things, the claim does not define any hardware features of the “game controller comprising a process or a memory” or any technical means by which the necessary processing functions are performed to implement the game. No software application or program code for carrying out the steps is defined by the claims. There is no suggestion of ingenuity in their implementation, which is left entirely to the skilled person reading the claim.
In a point which bears emphasising (as it appears so often overlooked or misunderstood), Burley J began by reiterating that the ground of manner of manufacture is a separate and discrete requirement of validity, independent of other grounds like novelty, innovative step, utility and secret use. So, as his Honour pointed out at :
whilst a claim for a ball point pen would fail for anticipation and inventive step, it would still be a claim for a manner of manufacture.
After referencing the “scheme” line of cases, Burley J considered at  they mandated a two stage inquiry:
- The initial inquiry was whether or not the claim was for a mere scheme or business method of the type that was not the proper subject matter for a grant of a patent.
- If so, a second inquiry arose: whether or not the claim involved the creation of an artificial state of affairs where the computer was integral to the invention, rather than a mere tool in which it was performed. That is, was there invention in the computerisation of the claimed method?
Each step was to be undertaken as a matter of substance rather than mere form.
According to his Honour, it was at the second stage that it became necessary to identify whether or not the “contribution” was “technical in nature” or solved a “technical” problem or merely required a “generic” computer implementation.
The present case was different to the “mere scheme” line of cases because what was claimed was a mechanism of a particular construction where the integers interacted to produce a particular product. At , his Honour summarised:
the invention described and claimed, when understood as a matter of substance, is to a mere scheme or plan. It is to a mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way.
Accordingly, it was unnecessary to embark on the second inquiry required for “mere scheme” cases.
As there was a physical product, therefore, it appears that the instant claims were conceptually different to those in Emcompass and Rokt. Burley J considered the instant claims were conceptually more like those upheld by Nicholas J in Konami and Dowsett J in LTH Consulting where, for example, Nicholas J had explained:
the inventions in suit claimed are not “mere ideas” but “new and useful gaming machines and new and useful methods of operation producing new and improved results”.
In opposing this claim, the Commissioner was labouring under the difficulty of the many, many patents already granted for EGMs and gaming machines generally. Moreover, the Commissioner necessarily conceded (consistently with his Honour’s ball point pen example) that the claim would have been a manner of manufacture if it had been implemented “the old-fashioned way, without using software but instead using cogs, physical reels and motors to create the gameplay”.
Thank goodness for that blow in favour of modernity and technological developement! One might question whether, when putting the elements into a box qualifies as a manner of manufacture, offering exactly the same functionality online accessible through a browser would also qualify as a manner of manufacture. Indeed, the specification refers to the invention being implemented alternatively by a “thick client” architecture or a “thin client” architecture. And, if it did, how would one reconcile that with Rokt?
- All four were divisionals from the same parent: AU 2015210489. ?
- In this image from the decision, the vertical, numbered lines represent a portion of 5 “reels” (showing 3 symbols per reel) and the horizontal, lettered lines are rows. ?
- Grant v Commissioner of Patents  FCAFC 120; 154 FCR 62; Research Affiliates LLC v Commissioner of Patents  FCAFC 150; 227 FCR 378; Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177; 238 FCR 27; Encompass Corporation Pty Ltd v InfoTrack Pty Ltd  FCAFC 161; 372 ALR 646; Watson v The Commissioner of Patents  FCAFC 56 and Commissioner of Patents v Rokt  FCAFC 86. ?
- At , Burley J expanded on the physical components claimed and how they interacted through the software to produce an outcome and, at , his Honour referred to the tight regulatory supervision imposed on EGMs. ?
- P. 4: “For example, a ”thick client“ architecture may be used wherein part of the game is executed on a player operable gaming machine and part of the game is executed remotely, such as by a gaming server; or a ”thin client“ architecture may be used wherein most of the game is executed remotely such as by a gaming server and a player operable gaming machine is used only to display audible and/or visible gaming information to the player and receive gaming inputs from the player.” ?