You’ve Got to Know When to Hold ‘Em: Aristocrat Loses Patentability Bid At Full Federal Court
In Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat), the Full Court of the Federal Court of Australia has deemed claims relating to an electronic gaming machine (EGM) configured to trigger a “feature game” unpatentable.
This is an interesting one due to the apparatus in question (the EGM) being perched somewhat awkwardly between a computer and a ‘machine-proper’.
The decision is helpful for the clear stance it takes on the test to be applied: the primary Judge’s “2-stage” test is out; the correct analysis for computer-implemented inventions (CIIs) is whether there is an “improvement in computer technology”.
However, the decision also raises some questions, particularly around the majority’s reasoning in concluding that the EGM “is” a computer. It is also not entirely clear whether the primary judge’s “machine of particular construction” proposition survives in some narrow sense despite the 2-stage test within which it was nested having been thrown out.
THE DECISION
Claim 1 of the innovation patent in question[1] related to “a gaming machine” including, inter alia, a display, a credit input mechanism (being “a coin input chute, a bill collector, a card reader [or] a ticket reader”), a game play mechanism including buttons for inputting a wager and initiating gameplay, and a game controller comprising a processor and memory configured to display a base game (of the “reel” variety), trigger a feature game, effect said feature game in accordance with a specified protocol, and assign prizes.
Claim 1 in full read as follows:
A gaming machine comprising:
a display;
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;
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;
a random number generator;
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
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,
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:
select a plurality of symbols from a first set of reels defined by the symbol data using the random number generator;
control the display to display the selected symbols in a plurality of columns of display positions during play of a base game;
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,
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
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.
The primary Judge[2] had employed a 2-stage test, asking, firstly, whether the claimed invention is directed to a mere scheme or plan; and if so, then secondly whether the invention lies in the computerization of that scheme or plan. The primary Judge found that since the claims at issue recited a “machine of particular construction” (viz. the EGM), then of necessity they were not directed merely to a scheme or plan, and thus the second question did not need to be posed. Both the 2-stage test, and the notion of a “machine of particular construction”, have since been incorporated into IP Australia’s practice manual.
The Full Court rejected the primary Judge’s approach, noting that it leapfrogs the question of whether the invention is a computer-implemented invention to begin with,[3] and observing that “it has the potential to convert the overarching inquiry (‘is the invention patentable subject matter?’) into a single question (‘is the invention not a scheme?’)”.[4]
In its place, the majority in the Full Court decision laid out the correct approach as being to ask, firstly, whether the invention is a computer-implemented invention; and if so, then secondly whether “the invention claimed [can] broadly be described as an advance in computer technology”.[5] By this, the majority had in mind “whether what is put forward as inventive (or innovative) about [the claimed invention] pertains to the development of computer technology or merely its use.” They found that Aristocrat’s claim 1 fell into the latter category and thus was not patentable subject matter (with Nicholas J concurring in his separate reasons).
The majority did not accept that the “improve[d] player engagement” or “subjective satisfaction” allegedly provided by the claimed invention were apposite, stating that “[n]one of that has anything to do per se with the development or advance of computer technology” and that “[the claims] do not call upon the programmer to use his or her skills to produce code which improves player engagement and subjective satisfaction [but rather] to produce code which implements the feature game”.[6] The latter comment seems like an overly strict approach, seemingly requiring the claims to explicitly recite the objective or effect of the invention. Arguably the better question to ask would have been whether “engagement and satisfaction” constitute a “technical effect” – and this was the approach taken by Nicholas J, who noted that “the fact that a game is made more interesting to players is not in itself [an unusual technical] effect but there may well be ways in which the computer could be utilized that adds to the attractiveness of the game through the use of unconventional technical methods or techniques which might themselves give rise to patentable subject matter”.[7] [8]
The majority also expressed a lukewarm view of certain “signposts” employed in other CII patentability cases, notably “generic computer technology” and “generic software”. They remarked that “to inquire into whether a computer is generic does not seem to add much to the basic question of whether the invention claimed represents an advance in computer technology”[9]. As for “generic software”, they remarked, "If … ‘generic’ is to be taken to refer [to] that class of software which does not involve any advance in computer technology then the expression is redundant since that is the test which is in any event applied.”[10]
In his separate reasons, Nicholas J viewed concepts like ‘genericism’ of computer technology as indeed being useful signposts when screening for an “artificial state of affairs”.[11] However, he ultimately came to a similar conclusion as the majority, quoting from Encompass[12] in observing that constructs like ‘genericism’ “do[] nothing more than explain[] that the [claims do] not transcend, as a matter of substance, what remain[s] an abstract idea or mere information”;[13] and accordingly cautioning that “it is not appropriate to adopt an excessively rigid or formulaic approach to the question whether a computer implemented scheme is a manner of manufacture.”[14]
This will likely be welcomed by CII applicants, ‘genericism’ of hardware and software being a relatively common allegation made by the patent office during prosecution which tends to detract from underlying technical character. Thus, the Court’s caution against muddling the enquiry with extraneous questions that don’t “advance[] debate in either direction”[15] may hopefully herald a positive shift.
The decision also contains a superb explanation, at [88] – [91], of the apparent anomaly of why some CIIs are considered non-patentable even though their “non-computerized” equivalents would be patent-eligible. The decision explains that “[p]rior to the rise of computers, patent law encouraged the invention of physical apparatus, methods and processes all of which, at some level, relied upon an abstract idea. But what was protected was the invention and not the abstract idea upon which it ultimately rested… By contrast, a computer’s only purpose is to give effect to the abstract ideas embodied in the code which it executes. Giving life, therefore, to an abstract idea by implementing it in a computer has not been accepted by this Court as something warranting, without more, the grant of a monopoly.”
WHEN IS A MACHINE A COMPUTER?
Early on in their reasons, the majority made the determination that “the computer in question is an EGM”,[16] that is to say, they conceptualized the EGM as in effect being a computer; and they stuck doggedly to this throughout the decision. A lengthy portion of the reasons was devoted to explaining why they believe this is so.[17] (Having categorized the EGM in this manner, they then went on to separately evaluate whether the invention is a “computer-implemented invention”, and ultimately whether it is patentable).
This characterization – of the EGM as a computer – doesn’t quite seem to do justice to the facts. It overlooks the gaming machine obviously being, and being claimed as, an actual physical apparatus having numerous “mechanical” integers – the display, the credit input mechanism (such as a coin input chute), and the game play mechanism including buttons for inputting a wager and initiating gameplay (which the majority referred to simply as “input and output devices”)[18] – not to mention the fact that the preamble recites “a gaming machine”. Not to put form over substance, but these are all, after all, integers of claim 1.
At [49] the majority asked “whether the fact that an EGM is contained in a cabinet with artwork on it can alter its characterisation as a computer. We do not think that it can.” But a claim to “a computer in a room”, whatever its deficiencies may be, would undoubtedly be a claim to more than just a computer per se; the room is not part of the computer. Or a claim to, say, a digger, conventional in all respects but having an onboard computer console configured to do something non-technical like take an employee satisfaction survey prior to each use. Nobody would propose that the digger “is” the computer by virtue of being a passive integer in which the computer is hosted. Not to say that such a claim would be patentable, only that there would be an intuitive delineation between “computer” and “non-computer”.
Just as the primary Judge may have committed the faux pas the Court has now remarked on, so arguably the Court has gone in the other direction – overcharacterising what “is” a computer. The reasoning would have been more satisfying if they had characterized the gaming machine as including or incorporating a computer, or as being computerized.
Indeed, this was more the approach taken by Nicholas J. Having noted that “It will often be useful to distinguish between general purpose computers which involve a separate and distinct field of technology that is different from the field from which the computer implemented invention may have emerged (eg. business or financial management) and special purpose computers (eg. those used to control aircraft or drilling rigs) which may raise more complex issues as to the proper characterisation of the relevant invention”[19], he then went on to say: “the EGM described and claimed is either a computer or an apparatus that incorporates a computer. Whether it is classified as a computer or as an apparatus that incorporates a computer does not alter the analysis in this case because the substance of the invention, as described and claimed, resides in the game program code which embodies a computer implemented scheme or set of rules for the playing of a game.”[20]
Ultimately, as Nicholas J noted, little probably rests on the niceties of where exactly the computer starts and ends in this instance. But it is a salient aspect of the judgment nonetheless, and may be a critical distinction in other scenarios.
MACHINE OF PARTICULAR CONSTRUCTION… DECONSTRUCTED?
Part of the hoopla when the first-instance decision issued was on account of the notion of a “machine of particular construction”, which applicants and attorneys hoped would prove to be a useful foothold.
As noted above, the 2-stage test set out in the first-instance Aristocrat decision has been incorporated into IP Australia’s practice manual – not only in the “gaming machines”[21] section, but also in the broader section dealing with computer-implemented inventions generally.[22] The latter section also references the “machine of particular construction” concept (being “a machine having a sole purpose and being specifically designed / constructed to carry out that purpose”), and states that “If the subject matter of the claim is a machine of particular construction, it is in substance not a scheme and it is unnecessary to proceed to the second question”.
The concept has been relatively popular with applicants at the Hearing Office level, though with little joy thus far. In many cases the argument has failed on the simple basis that the computer apparatus / implementation were entirely generic and there was nothing close to a “machine of particular construction”[23] and / or due to it not being apparent that the system was ““locked down" so that the user could only carry out the single function of the method of the claims”.[24]
Other cases have had a higher level of apparent “tangibility” but, thus far, have also been unsuccessful. In CareFusion 303, Inc. [2021] APO 12, claims to a system comprising “one or more active identification (ID) devices affixed to respective packages of one or more medications prepared for delivery” were held to fall short due to the respective elements all being “well-known technologies”, and also the “linking” being insufficient to get across the line. In Amsted Rail Company, Inc.,[25] with claims to “apparatus comprising a plurality of transportation vehicles [and] a plurality of containers each having a mounting arrangement by which the container is attached to a respective one of the transportation vehicles”, the argument failed due to there being “no recognisably well-defined or predefined device of a certain character or construction”. In Nuctech Company Limited,[26] the claims were directed to “a smart security inspection system” comprising, inter alia, an information area, a baggage packing / unpacking area with stations, a security inspection machine, a human-body check machine, and a baggage sorting device, with some of these elements being arranged upstream / downstream of others. The Delegate remarked that “the claims can in no way be said to be a machine of particular construction having a single purpose… As the most obvious indication, the present invention has areas of floor space where people can gather and certain actions (by people) are to be carried out, with people moving between the different areas. It is not analogous to the self-contained unit of Aristocrat which is operated by a user. The present invention has disparate “pieces” (i.e., the areas) linked by “lines of customers”.”
Perhaps the closest attempt is Crown Melbourne Limited,[27] where the Delegate did not seem to dispute that claims to “a Roulette apparatus comprising a table” qualified as a “machine of particular construction”, but nonetheless distinguished Aristocrat on the basis that in Aristocrat, unlike in the invention at issue, “there was a physical effect on the EGM on the occurrence of a trigger event”.
eBay Inc.[28] is an interesting one, in that the claims were deemed to relate to a manner of manufacture and the first-instance Aristocrat decision was cited by the applicant with “nothing contentious about the appropriate principles of law that apply.”[29] However, it is not apparent that the Delegate’s favourable finding was related to the “machine of particular construction” principle per se. On the one hand, the Delegate characterized the computer elements as being “standard devices known to the person skilled in the art” and “general purpose computers”,[30] – so the “sole / specific purpose” requirement of the “machine of particular construction” idea does not appear to have been satisfied. On the other hand, the Delegate accepted that the claims “are all directed to a device such as a mobile phone or the like, having physical components… Put another way the application is directed towards a navigation device”.[31] It is therefore unclear to what extent the Delegate’s ultimate conclusion that “the claimed invention is not a mere scheme, abstract idea, or a business process or plan, but, rather, it provides a technical solution to [a] technical and physical problem… in combination the features as defined in the claims that define the device… all produce a practical and useful result”[32] can be considered an application of the “machine of particular construction” idea.
It is open to interpretation whether the Full Court in Aristocrat has rejected the “machine of particular construction” concept as a proposition. They appear to allude to the notion a couple of times – at [56], “What this purpose-specific but extremely common computer does is play the feature game”; at [34], “No doubt, an EGM is a particular kind of purpose-built computer but that does not mean it is not a computer”; and at [42], “[a]n EGM is a specific, highly regulated machine as Aristocrat submitted but this does not mean that it is not a computer” – but with no explicit rejection of the concept itself (other than the rejection of the 2-stage test within which that concept was nested).
If the “machine of particular construction” notion survives, the question is, does it have any utility within the “advance in computer technology” framework now imposed by the Full Court? Perhaps only in a roundabout way, in that a sufficiently “complete” machine may be argued to fall within the “conventional” principles discussed at [88] – [91], namely it might qualify as a “specific embodiment of an idea” rather than an idea per se.
CONCLUSION
The Aristocrat decision is a useful addition to the conversation on patentability of CIIs. The case also raises some “quirky” issues due to the “ambiguous” nature of the apparatus in question.
Author: Anna Klepacki
Endnotes:
[1] The Primary Judge's decision and the appeal only address one of Aristocrat's innovation patent applications, but by agreement it was accepted that the outcome would apply to three other applications.
[2] Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778.
[3] At [21].
[4] At [25].
[5] At [26].
[6] At [64].
[7] At [142]; see also [116].
[8] He referenced Konami as an example of this, describing this (at [124]) as “a case in which a gaming machine… that provided a technical solution to a practical problem in the field of gaming technology was proper subject matter of a patent.”
[9] At [38].
[10] At [39].
[11] At [112].
[12] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; 372 ALR 646.
[13] At [112].
[14] At [116].
[15] At [40].
[16] At [31].
[17] At [32] – [49].
[18] At [32] and [44].
[19] At [112].
[20] At [138].
[21] https://manuals.ipaustralia.gov.au/patent/2.9.2.9-games-and-gaming-machines
[22] https://manuals.ipaustralia.gov.au/patent/2.9.2.7-computer-implemented-inventions-schemes-and-business-methods
[23] For example Advanced New Technologies [2021] APO 29; Commonwealth Scientific and Industrial Research Organisation [2021] APO 43; Repipe Pty Ltd v Commissioner of Patents (No 3) [2021] FCA 31; CareFusion 303, Inc. [2021] APO 10.
[24] CareFusion 303, Inc. [2021] APO 11.
[25] [2021] APO 25.
[26] [2021] APO 41.
[27] [2020] APO 47.
[28] [2020] APO 49.
[29] At [35].
[30] At [8].
[31] At [37].
[32] At [44].
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