6 May 2024

After Burley J dismissed Aristocrat’s remitted claims for innovation patents over an electronic gaming machine (EGM), Aristocrat has now sought leave to appeal.[1]

To recap

Aristocrat had three innovation patents – AU 2016101967, 2017101629 and 2017101097 – for an EGM with a new, free feature game and trigger. The Commissioner revoked the patents on the ground that they not a manner of manufacture on the basis that the substance of the invention was merely a game or the rules of a game.[2]

Burley J allowed Aristocrat’s appeal, finding that the claim 1 was a mechanism of a particular construction and so was a practical embodiment rather than a mere, abstract scheme.

Although it was accepted before their Honours that the claimed invention would be a manner of manufacture if the game had been implemented in a device made in the “traditional” way utlising cogs and spinning wheels rather than software, the Full Federal Court unanimously upheld the Commissioner’s appeal, albeit for different reasons.

As it had been sufficient for Burley J to deal with claim 1 only and Aristocrat contended there were further issues raised by the dependent claims, the Full Federal Court ordered that:

The proceedings are remitted to the primary judge for determination of any residual issues in light of the Full Court’s reasons including any issues which concern the position of [the residual claims] and the costs of the hearings before the primary judge. (emphasis supplied)

Before that could happen, however, the High Court subsequently granted leave to appeal – unusually for that time, on the papers. As I am sure you no doubt recall, three Judges (Kiefel CJ, Gageler and Keane JJ) of the High Court would have dismissed the appeal; three other Judges (Gordon, Edelman and Steward JJ) would have allowed it; Gleeson J was apparently unable to sit.

The High Court being equally divided, the decision of the Full Federal Court was affirmed.[3] Even the the three judges who would have dismissed the appeal, however, appeared to reject the principle propounded by the majority in the Full Federal Court. At [77], Kiefel CJ, Gageler and Keane JJ said:

…. the two?step analysis proposed by their Honours unnecessarily complicates the analysis of the crucial issue. As explained in Myriad, the crucial issue is as to the characterisation of the invention by reference to the terms of the specification having regard to the claim and in light of the common general knowledge. It is not apparent in the present case that asking whether the claimed invention is an advance in computer technology as opposed to gaming technology, or indeed is any advance in technology at all, is either necessary or helpful in addressing that issue. As Nicholas J explained, the issue is not one of an “advance” in the sense of inventiveness or novelty. In conformity with the decision in N V Philips, the issue is whether the implementation of what is otherwise an unpatentable idea or plan or game involves some adaptation or alteration of, or addition to, technology otherwise well?known in the common general knowledge to accommodate the exigencies of the new idea or plan or game. (citation omitted)

As the tied result in the High Court meant the Full Federal Court’s decision was affirmed, that in turn meant that the patentability of Aristocrat’s claimed invention was remitted to Burley J for determination of any residual issues.

On remitter

On remittal, Burley J rejected Aristocrat’s invitation to adopt the reasons of the three Judges in the High Court who would have allowed the appeal.

Burley J considered it was inappropriate to search for a principle, or principles, which a majority of the High Court judges had agreed on. Rather, pursuant to s 23(2)(a) of the Judiciary Act, the Full Federal Court’s decision had been affirmed and, accordingly, he was required to decide the residual issues in accordance with the order remitting those issues to him to be decided in light of the [majority’s] reasons.

His Honour concluded that the additional features specified in the dependent claims did not make any technical contribution that could be described as an advance in computer technology. Therefore, in accordance with the majority’s conclusions in the Full Federal Court, the claims with the additional features were still nonetheless not patentable subject matter.

Although patents are supposed to be available for any inventions in all fields of technology and without discrimination as to the field of technology,[4] Middleton and Perram JJ had ruled at [25] that, in a case of the kind before their Honours, it was not appropriate to inquire whether the claimed invention was a scheme as that “may reduce the richness of analysis called for.” Paradoxically given the narrowness of the approach compared to that of Nicholas J, their Honours held at [26] that the issue fell to be determined by two questions:

(a) Is the invention claimed a computer-implemented invention?

(b) If so, can the invention claimed broadly be described as an advance in computer technology?

In the case of claim 1, the Full Federal Court found that it was only the integers comprising the feature game (see features 1.10 to 1.12 below) that distinguished the EGM from the state of the art. However, the implementation of the feature game did not involve any advance in computer technology and so claim 1 was not a manner of manufacture.

Claim 5 of the 967 Patent

Burley J identified the features of claim 5 of the 967 Patent (as you will appreciate, those numbered “1.” are from claim 1):

(1.0) 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;

(4.1) wherein each reel of the first set of reels comprises configurable symbols and non-configurable symbols and

(4.2) wherein the game controller is configured to assign prize values to each displayed configurable symbol.

(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

(3.1) wherein the second set of reels comprises individual reels each corresponding to an individual display position.

(5.1) wherein the game controller is configured to increase a number of free games remaining in response to the selection of one or more additional configurable symbols in at least one of the free games.

(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.

Then his Honour held:

[135] Having regard to the findings of the majority decision of the Full Court, in my view, the only conclusion available is that dependent claim 5 of the 967 patent provides no additional features that would warrant a conclusion different to the conclusion reached by the majority decision in respect of claim 1 of the 967 patent. Having regard to dependent claim 5 of the 967 patent as set out above, integers 4.1 and 4.2 add features relating to the use of “configurable symbols” in the “first set of reels” for the first or base game identified in integer 1.8. Integer 3.1 adds that the second set of reels identified in integer 1.11 comprises individual reels each corresponding to an individual display position. Integer 5.1 refers to the game controller (identified in integer 1.6) being configured to increase a number of free games remaining in response to the selection of one or more additional configurable symbols in one or more of the free games.

[136] Taken collectively, the additional integers of dependent claim 5 of the 967 patent impose additional features or limitations on the conduct of the game referred to in claim 1. None, to adopt the language of the majority decision at [63], may be said to pertain to the development of computer technology. Each leaves it to the person designing the EGM to do the programming which gives effect to the family of games (or rules) which those integers define.

Similar reasoning applied for the other patents.

Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212

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1. Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents, NSD506 / 2024, filed on 26 April 2024. As Burley J’s decision is on appeal from the Commissioner, an appeal is not as of right but requires leave: Patents Act 1990 (Cth) s 158(2).  ?
2. Patents Act s 18(1A)(a) and, for standard patents, 18(1)(a).  ?
3. Judiciary Act 1903 (Cth) s 23(2)(a).  ?
4. TRIPS art. 27.1  ?