Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents - [2022] HCA 29

HIGH COURT OF AUSTRALIA
KIEFEL CJ,
GAGELER, KEANE, GORDON, EDELMAN AND STEWARD JJ
ARISTOCRAT TECHNOLOGIES AUSTRALIA
PTY LTD APPELLANT
AND
COMMISSIONER OF PATENTS RESPONDENT
Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents
[2022] HCA 29
Date of Hearing: 9 & 10 June 2022
Date of Judgment: 17 August 2022
S40/2022
ORDER
Appeal dismissed with costs.

On appeal from the Federal Court of Australia
Representation
D Shavin QC and C L Cochrane SC with P J T Creighton-Selvay and W H Wu for the appellant (instructed by Gilbert + Tobin)
C Dimitriadis SC with E E Whitby for the respondent (instructed by Australian Government Solicitor)
F C St John with N L Gollan for the Institute of Patent and Trade Mark Attorneys of Australia, appearing as amicus curiae (instructed by Mills Oakley)
Fédération Internationale des Conseils en Propriété Intellectuelle appearing as amicus curiae, limited to written submissions
Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

CATCHWORDS
Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents
Patents – Invention – Manner of manufacture – Where appellant manufactured electronic gaming machines ("EGMs") – Where appellant owned four innovation patents concerning various embodiments of EGM – Where specification described claimed invention as combination of player interface, being physical features of EGM, and game controller, being computerised components interacting with player interface to implement base game and feature game – Where player interface and game controller part of common general knowledge – Where delegate of respondent revoked innovation patents on ground that claim in each not "manner of manufacture" within meaning of s 18(1A)(a) of Patents Act 1990 (Cth) – Whether claimed invention "manner of manufacture" within meaning of s 18(1A)(a) of Patents Act.
Words and phrases – "abstract idea", "artificially created state of affairs", "characterisation", "common general knowledge", "computer‑implemented invention", "electronic gaming machine", "generic computer technology", "improvement in computer technology", "innovation patent", "invention", "manner of manufacture", "mere scheme or plan", "patent", "patentable subject matter", "proper subject of letters patent", "Statute of Monopolies", "useful result".
Patents Act 1990 (Cth), s 18, Sch 1.

KIEFEL CJ, GAGELER AND KEANE JJ. The appellant ("Aristocrat") is a company which manufactures electronic gaming machines ("EGMs"). Aristocrat owns four innovation patents granted pursuant to s 62 of the Patents Act 1990 (Cth) ("the Act"), each of which derives from patent number 2015210489 filed on 10 August 2015 and each of which has a priority date of 11 August 2014[1]. The patent the subject of consideration in this proceeding was entitled "A system and method for providing a feature game" and the field of invention described in the patent specification itself was said to relate to a gaming system and a method of gaming.
[1]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 401 [1], 402 [6], [10]; Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 575 [4]. See also Aristocrat Technologies Australia Pty Ltd [2018] APO 45 at [8].
The respondent ("the Commissioner"), having been asked to examine the innovation patents pursuant to s 101A of the Act, revoked each of the patents on the ground that the claim in each was not for a manner of manufacture within the meaning of s 18(1A)(a) of the Act. The Commissioner's delegate concluded that, no technical contribution to the art being made by any of the innovation patents, the substance of the invention was nothing beyond the games and the game rules of gaming machines, and, as such, was not patentable subject matter[2].
[2]Aristocrat Technologies Australia Pty Ltd [2018] APO 45 at [12], [67].
Aristocrat's appeal against the delegate's decision to the Federal Court of Australia (Burley J) was allowed; but then the Commissioner appealed successfully to the Full Court of the Federal Court of Australia (Middleton and Perram JJ, Nicholas J agreeing). Aristocrat has appealed to this Court pursuant to a grant of special leave. For the reasons that follow, Aristocrat's appeal to this Court should be dismissed.
It is necessary to begin with a description of the design and operation of EGMs, Aristocrat's claim as formulated and a summary of the legal framework within which that claim was determined. The reasons for judgment of the courts below will then be summarised before turning to a consideration of the arguments agitated in this Court.
The design and operation of an EGM
An EGM is a physical device that is available for sale to licensed venues such as casinos, hotels and clubs. It is a modern form of a poker or slot machine. It typically has a number of features, which were agreed by the parties in the courts below to be part of the common general knowledge possessed by persons who devote their talents to the construction of EGMs as at the priority date. Those features are[3]:
[3]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 406 [30]; Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 576 [7].
"(a)a central display area or screen that displays the game(s) to be played and other game‑related information (for example, prizes won and available credits);
(b)relative to the central display area or screen, upper and/or lower display areas of screens that display various information about the game in the cabinet, including the name of the game, the supplier and other pertinent information;
(c)a random number generator;
(d)a game controller which controlled gameplay by executing software stored in memory;
(e)buttons for user interaction, either touch screen or physical buttons;
(f)a credit input mechanic, being either a cash note input or [ticket] reader;
(g)a coin out or ticket out mechanic;
(h)artwork featured above the display in digital form as well as artwork in hardcopy on the belly of the EGM; and
(i)speakers to play music, sound effects and announcements."
It was also part of the common general knowledge that, in 2014, EGMs were distinguished from each other by certain features engaging and entertaining players in different ways[4].
[4]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 406 [31]; Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 576 [7]‑[8].
Since the 1980s, EGMs have been operated electronically including by computers, electronic circuitry and electronic display screens. In 2014, EGMs generally consisted of five virtual or video reels of symbols being displayed in a grid or matrix, each of which spun vertically and stopped at random positions to be displayed in that grid or matrix upon completion of the spin, as determined by a random number generator. Each of the five reels could have strips of symbols that were the same as or different from the symbols that appeared on other reels within that same game, depending on the design of the strip. The total number of symbols on a given reel defined its "reel strip order", which was determined by the game designer and comprised all the symbols that could appear on the reel. The number of possible combinations of symbols in an EGM using virtual or video reels is, in principle, unlimited[5].
[5]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 407‑409 [32], [35]‑[37], [39]‑[42].
To commence a game, a player inserts credits, in the form of money or some other form of payment, and he or she can select the value of a bet. Whether the player wins depends on the occurrences of a winning symbol combination across the five reels on predefined "pay lines" or "win lines". A player may choose to place a wager to cover one or more win lines and each of the five reels is independent of the other. Winning combinations can also be formed if a certain symbol, known as a "scatter" symbol, appears anywhere in the grid[6].
[6]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 408 [38], 409 [43].
The advent of electronics allowed designers to create new ways to stimulate and maintain player interest, commonly through the use of free games, bonus games or games in addition to the main or base game (a "feature game")[7]. A feature game is a secondary game made available to a player on the occurrence of a defined "trigger event" in the base game. The player can seek to win further prizes in the feature game and will be returned to the base game upon completion. The more successful a feature game is at holding player interest – and encouraging further betting – the more lucrative the EGM is for its operator[8].
[7]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 409 [44].
[8]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 574‑575 [3]‑[4].
The claim in the innovation patents
The innovation patents are referred to respectively as the 967 patent, the 097 patent, the 098 patent and the 629 patent[9]. The parties agreed that the specification of claim 1 of the 967 patent is sufficiently similar to the specifications of the others that it may be used for the purpose of analysis[10]. As noted earlier, the 967 patent was entitled "A system and method for providing a feature game".
[9]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 402 [5].
[10]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 402 [8]‑[9]; Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 574 [1].
The specification of the 967 patent described the architecture of the claimed invention as a computerised EGM with several of the core components being part of the common general knowledge[11]. The part of the specification entitled "Detailed Description of a Preferred Embodiment of the Invention" described the game structure of the system as "having components which are arranged to implement a base game, from which may be triggered a feature game". The system incorporated a mechanism that enabled symbols to be configured so as to define when a feature game is triggered. The configurable symbols contained a common component and a variable component. The variable component of each configurable symbol was indicative of the value of a prize. When the feature game was triggered, the player was guaranteed to win the accumulated value of the prizes indicated by the variable portion of the configurable symbols[12]. The specification only gave examples of what a feature game may look like; it otherwise left open that "any number of configurable symbols may trigger the feature game", that element of the invention being up to the person programming the computer on which it is played.
[11]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 410‑415 [51]‑[68].
[12]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 410 [48]‑[50].
Claim 1 of the 967 patent consisted of the following integers[13]:
[13]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 415 [69].
"(1) 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."
The specification stated that when a "trigger event" occurs, a free feature game, as described by integers 1.10‑1.12, is initiated, whereupon the configurable symbols are held in their display positions and the feature game is run. That feature game may use the configurable symbols, symbols from the base game or different symbols. The player accumulates prizes throughout the play of both the base game and the feature game[14].
[14]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 414 [66]‑[67].
Each time a configurable symbol appears in the display grid at the end of the free game, that particular symbol position on the relevant reel stops spinning for any remaining games and remains locked in place. When the player runs out of free games in the feature game, a prize is calculated and awarded to the player based on the number of configurable symbols and their assigned values which have been locked in place. The 967 patent does not disclose any particular description of a configurable symbol, but provides for them to be assigned prize values by the computer on which the game is played[15].
[15]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 577 [11]‑[12].
The gaming industry in Australia is, and was in August 2014, regulated by State‑based authorities. In addition, the Australian/New Zealand Gaming Machine National Standard is a set of national standards that apply, and also applied in 2014, and which establish mandatory requirements for EGMs regarding matters such as cash input systems, credit metering and the minimum return to player[16].
[16]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 409 [45], 422 [97].
The Act
The Act distinguishes between two kinds of patents: standard patents and innovation patents, which are defined as letters patent for an invention granted under s 61 or s 62 of the Act respectively[17].
[17]Sch 1 to the Act, definitions of "standard patent" and "innovation patent". The version of the Act applicable to the innovation patents is that which follows the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), but the amendments therein are not presently relevant.
Within Pt 3 of Ch 2 of the Act, s 18 defines the circumstances in which a patent is valid, or what constitutes a "patentable invention"[18]. A "patentable invention" is defined in the Dictionary in Sch 1 to the Act as "an invention of the kind mentioned in section 18". The term "invention" is defined as:
"any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention".
[18]See also N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 659.
For the purposes of an innovation patent, s 18(1A) provides:
"Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an innovative step; and
(c)is useful; and
(d)was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention."
The exceptions in sub‑ss (2) and (3) relate to plants, animals, human beings and the biological processes for their generation. Those exceptions are not presently relevant.
The requirements for a valid innovation patent differ from those for a standard patent contained in s 18(1) of the Act only in that a standard patent must involve "an inventive step", rather than "an innovative step". Nothing was said to turn on the distinction between those terms in this appeal[19]. The case law which has developed in relation to s 18(1) of the Act is thus relevant to the application of s 18(1A).
[19]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 574 [3].
The reference to a "claim" in the introductory words of s 18(1A) directs attention to the formal requirement of s 40(2)(c) of the Act that a complete specification for an innovation patent must "end with at least one and no more than 5 claims defining the invention". It has been held that, in the context of s 40(2)(b), the equivalent provision for standard patents in materially similar terms, the word "invention" does not "import the definition in the Dictionary, but means 'the embodiment which is described, and around which the claims are drawn'"[20].
[20]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 343 [13], quoting Kimberly‑Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at 14 [19], 15 [21], citing AMP Inc v Utilux Pty Ltd (1971) 45 ALJR 123 at 127.
Section 18(1A)(a) uses the "centuries old terminology"[21] that for an invention to be patentable it must be a "manner of manufacture" within the meaning of s 6 of the Statute of Monopolies[22]. That section declared all monopolies to be void save for:
"Letters Patents and Grants of Privilege for ... the sole working or making of any manner of new Manufactures within this Realm, to the true and first Inventor and Inventors of such Manufactures, which others at the time of making such Letters Patents and Grants shall not use, so as also they be not contrary to the Law nor mischievous to the State, by raising prices of Commodities at home, or hurt of Trade, or generally inconvenient ..."
[21]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 339 [4].
[22]21 Jac I c 3 (1623).

The course of authority in this Court[23] has established that, in an application for a patent under the Act, s 18(1)(a) raises the question: "Is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?"
[23]National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 at 269; Apotex Pty Ltd v Sanofi‑Aventis Australia Pty Ltd (2013) 253 CLR 284 at 297‑301 [10]‑[16], 324‑325 [71], 356 [186]‑[187]; D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 345 [18].
Generally speaking, "working directions and methods of doing things" fall outside s 6 of the Statute of Monopolies[24]. It has long been accepted that claims to a mere scheme, plan or discovery, or mere abstract ideas or information, are not claims for patentable subject matter[25]. Neither the discovery of a natural phenomenon or law of nature, nor a scheme or plan devised for the accomplishing of a task, nor a set of rules whether devised for the conduct of a business or the playing of a game, is the proper subject of letters patent.
[24]Grant v Commissioner of Patents (2006) 154 FCR 62 at 66‑67 [15].
[25]Re Cooper's Application (1901) 19 RPC 53 at 54; Reynolds v Herbert Smith & Co Ltd (1902) 20 RPC 123 at 126; Grant v Commissioner of Patents (2006) 154 FCR 62 at 66 [14], citing Lahore, "Computers and the Law: The Protection of Intellectual Property" (1978) 9 Federal Law Review 15 at 22‑23, approved in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 292; Research Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378 at 397‑398 [94]‑[95]; Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27 at 49 [96]; Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 372 ALR 646 at 667 [99].
It was held by this Court in National Research Development Corporation v Commissioner of Patents ("NRDC")[26], and affirmed in D'Arcy v Myriad Genetics Inc[27], that the terminology of "manner of manufacture" taken from s 6 of the Statute of Monopolies is to be treated as "a concept for case‑by‑case development" applied in accordance with common law methodology. It is not to be confined to the use of any verbal formula in lieu of "manner of manufacture", though various formulations have asked whether there is a "vendible product"[28] or "an artificially created state of affairs"[29].
[26](1959) 102 CLR 252 at 269.
[27](2015) 258 CLR 334 at 339 [5].
[28]Apotex Pty Ltd v Sanofi‑Aventis Australia Pty Ltd (2013) 253 CLR 284 at 303 [21]; D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 345 [19], both citing Re GEC's Application (1942) 60 RPC 1 at 4.
[29]NRDC (1959) 102 CLR 252 at 277.
The practical implementation of a discovery of an abstract truth about nature, or a strategy devised for the conduct of business, or a set of rules devised for a game – whatever the level of originality of the discovery or exhibited in the devising – is not patentable subject matter if the mode of implementation is not itself patentable. The distinction is "between mere intellectual information and a method that affect[s] the operation of an apparatus in a physical form"[30]. So, in Grant v Commissioner of Patents[31], it was held that a method for protecting assets from unsecured judgment creditors was not patentable. The method comprised establishing a trust, giving money to the trust, borrowing said money from the trust and the trustee securing the loan by taking a charge for the money over the asset. The Full Court (Heerey, Kiefel and Bennett JJ) concluded that the claimed method was "at best an abstract, intangible situation"; it had no physical consequence for process or product[32].
[30]Grant v Commissioner of Patents (2006) 154 FCR 62 at 67 [18].
[31](2006) 154 FCR 62.
[32]Grant v Commissioner of Patents (2006) 154 FCR 62 at 70‑71 [30]‑[32].
Of course, a claimed invention which serves a "mechanical purpose that has useful results" is not unpatentable "merely because the purpose is in the carrying on of a branch of business"[33]. In relation to computers and computer‑related technology, it has been held in decisions of the Federal Court that a claimed invention will be a proper subject of letters patent if it has some "concrete, tangible, physical, or observable effect", as distinct from "an abstract, intangible situation" or "a mere scheme, an abstract idea [or] mere intellectual information"[34]. It has been held that an artificial state of affairs may also be created if the invention can broadly be described as an "improvement in computer technology", where the computer is integral to the invention, rather than a mere tool in which the invention is performed[35]. These propositions may be illustrated by reference to those decisions.
[33]Grant v Commissioner of Patents (2006) 154 FCR 62 at 66 [14], citing Re Fishburn's Application (1938) 57 RPC 245 at 248.
[34]Grant v Commissioner of Patents (2006) 154 FCR 62 at 70 [30]‑[32]. See also International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218; CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 295; Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27 at 49‑50 [96]‑[99]; Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 372 ALR 646 at 665 [88].
[35]Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27 at 49‑50 [96]‑[99].
CCOM Pty Ltd v Jiejing Pty Ltd[36] concerned a claim for an invention which enabled a standard English keyboard to be used to generate Chinese characters for word processing purposes. The invention used a particular method of characterisation of character strokes which were applied to an apparatus in such a way that the operation of the keyboard would enable the selection through the computer of the appropriate Chinese characters. The Full Court (Spender, Gummow and Heerey JJ) held that the claimed invention was patentable subject matter. It was capable of being a manner of manufacture because it was concerned with a mode or manner of achieving an end result which was an "artificially created state of affairs of utility in the field of economic endeavour", that field being the use of word processing to assemble text in Chinese language characters[37]. The Full Court, in reaching its conclusion in favour of patentability of subject matter, referred with evident approval[38] to the observations of Graham J, delivering the decision of himself and Whitford J, in Burroughs Corporation's Application[39]:
"[I]f a method is regarded purely as the conception of an idea, it can always be said that the product of such a method is merely intellectual information. If, however, in practice the method results in a new machine or process or an old machine giving a new and improved result, that fact should in our view be regarded as the 'product' or the result of using the method, and cannot be disregarded in considering whether the method is patentable or not."
[36](1994) 51 FCR 260.
[37]CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 295.
[38]CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 293.
[39][1974] RPC 147 at 158.
The Full Court later noted in Grant that the invention claimed in CCOM included a "physically observable effect", being "the retrieval of graphical representations of desired characters for the assembly of text"[40], such that CCOM could be said to have fallen within a category of case in which, as an element of the invention, "there was a component that was physically affected or a change in state or information in a part of a machine"[41].
[40]Grant v Commissioner of Patents (2006) 154 FCR 62 at 68 [20].
[41]Grant v Commissioner of Patents (2006) 154 FCR 62 at 70 [32].
There is no issue that CCOM, as so explained, was correctly decided. As will be apparent from what will be said later in these reasons, there is nevertheless an aspect of the reasoning in CCOM which must be treated with caution in light of subsequent authority in this Court.
In contrast to CCOM, in Research Affiliates LLC v Commissioner of Patents[42], the Full Court (Kenny, Bennett and Nicholas JJ) held that a computer‑implemented business scheme for compiling a weighted index of securities using generic computer technology to produce an electronic file, for the purpose of determining how capital should be allocated, was not patentable subject matter. Similarly, a claim for a computer‑implemented method and apparatus for displaying information relating to one or more entities, and thereby providing business intelligence, was held in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd[43] to be no more than "an instruction to apply an abstract idea (the steps of the method) using generic computer technology". A claim for a computer‑implemented method for linking a user to an advertising message by way of an intermediate engagement offer, involving a series of detailed processing steps, was also held not to be patentable subject matter in Commissioner of Patents v Rokt Pte Ltd[44].
[42](2014) 227 FCR 378 at 400 [103], 402‑403 [115]‑[120].
[43](2019) 372 ALR 646 at 667 [99].
[44](2020) 277 FCR 267 at 296 [108]‑[109], 297‑298 [114]‑[115].
Aristocrat accepts that Grant was correctly decided. It is important, therefore, to note in relation to Grant that the method the subject of the claim was not patentable subject matter even though it was reduced to written form and thus instantiated as a vendible product. The presentation of an idea or method or scheme – or the rules of a game – in written form is one of the most obvious (and among the most ancient) examples of common general knowledge. Thus the facilitation of card games by the use of packs of cards bearing visible symbols and values has for so long been part of common general knowledge that no one would suggest that a new variation of the rules of a game such as poker is patentable subject matter. In such a case, the well‑known pack of cards is put to a different use for the purpose of the new game; but no one would suggest that there is an invention because the only difference from the common general knowledge lies in the idea of the new game[45]. In the present case, the integers in claim 1 defining the core physical and hardware components, including computer components[46], do not disclose any departure from the common general knowledge as to the computerisation of games or gaming. As the parties agreed was part of the common general knowledge, most EGMs in 2014 were "distinguished from each other by the way in which features were introduced to utilise the physical or hardware components to provide different products that would engage and entertain users in different ways"[47]. As will become apparent later in these reasons, that carries significance in respect of whether the claimed invention is a manner of manufacture.
[45]See, eg, Re Cobianchi's Application (1953) 70 RPC 199 at 201.
[46]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 604 [131].
[47]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 406 [31]; Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 576 [7]‑[8].
The reasons of the primary judge
Pursuant to s 101F(4) of the Act, Aristocrat appealed from the delegate's decision to the Federal Court[48]. As noted above, that appeal was successful.
[48]An appeal pursuant to that sub‑section proceeds as a matter in the original jurisdiction of the Federal Court of Australia, which is conducted as a hearing de novo: Commissioner of Patents v Sherman (2008) 172 FCR 394 at 399 [18], 400 [22]; Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 401 [2]‑[3].
Before the primary judge, a large volume of expert evidence was adduced from a patent attorney, several gaming experts and Human Computer Interaction experts[49]. The primary judge used this evidence as an aid to construing the claim, noting that expert evidence in such cases should be used only to place the court in the position of a person acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date[50].
[49]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 402‑406 [10]‑[28].
[50]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 405‑406 [27]‑[28], citing Kimberly‑Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at 16 [24]; D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 342‑343 [12].
The primary judge framed the "central question" as whether a claim for an EGM, which included a combination of physical parts and computer software to produce a particular outcome in the form of gameplay, is a manner of manufacture within s 18(1A)(a) of the Act[51]. As noted earlier, in accordance with the parties' agreement, the primary judge found it necessary to consider only claim 1 of the 967 patent to dispose of the matter[52].
[51]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 401 [1].
[52]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 402 [8]‑[9].
The primary judge assumed, uncontroversially, that the requirements of novelty, innovative step and usefulness were met, and that there had been no secret use before the priority date[53]. His Honour then stated he was required to consider whether the claims in suit, as read in light of the specification as a whole and the relevant art, were for a manner of manufacture[54]. His Honour then, controversially, adopted a two‑step process: first, he asked whether the claimed invention was for a "mere scheme or business method of the type that is not the proper subject matter of a grant of letters patent"; and secondly, if that question were answered in the affirmative, he asked whether the computer‑implemented method is one where invention lay in the computerisation of the method, or whether the language of the claim involves "merely plugging an unpatentable scheme into a computer"[55]. The second inquiry would have involved consideration of whether the contribution of the claimed invention is "technical in nature" or solves a "technical" problem, or whether it merely requires "generic" computer implementation[56] – matters which were the subject of expert evidence[57]. His Honour proceeded to decide the issue of characterisation of claim 1 of the 967 patent by resolving the first of these questions in the negative.
[53]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 419 [84], citing CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 291.
[54]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 419 [86]. See also 420 [87].
[55]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 420 [91], citing Commissioner of Patents v Rokt Pte Ltd (2020) 277 FCR 267 at 290 [84]. See also Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27 at 49‑50 [99].
[56]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 420 [91], quoting Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27 at 49‑50 [99].
[57]See Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 403‑405 [13]‑[26].
The primary judge accepted that the core components of an EGM provide an interactive means of playing a game, and that the EGM described in claim 1 was "a device of a particular construction, known and recognised by those [skilled] in the art"[58]. Nevertheless, his Honour went on to find that the claimed invention was not a "mere scheme or plan" on the basis that it was "to a mechanism of a particular construction, the operation of which involve[d] a combination of physical parts and software to produce a particular outcome in the form of an EGM that function[ed] in a particular way"[59].
[58]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 411 [54].
[59]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 421 [95].
His Honour found that the invention as claimed included hardware, firmware and software components that were identified, particularly the display, credit input mechanism, gameplay mechanism and game controller. His Honour found that the expert evidence established that a skilled reader would understand, upon reading the specification, that EGMs are subject to regulatory supervision and standards imposing requirements across many areas. To a person skilled in the art, "the machine that is the subject of the claims is built to allow people to play games on it", where each of its physical and virtual components amounted to nothing more than a combination of features to create "a device of a specific character"[60].
[60]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 421‑422 [96]‑[98].
The primary judge was influenced in his resolution of the first question in his two‑step process by the consideration that his approach advanced the social utility and value of innovation. His Honour observed that if claim 1 were to have been implemented mechanically in "the old‑fashioned way", using cogs, physical reels and motors to create the gameplay instead of software, there would undoubtedly have been a manner of manufacture because the combination of physical parts would be inseparable from the features of the game. His Honour considered that the utilisation of the efficiencies of electronic technology could not disqualify the invention from patent eligibility. To hold otherwise, his Honour observed, "would be antithetical to the encouragement of invention and innovation"[61].
[61]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 423 [102].
His Honour considered that the claims in the case before him were analogous to those considered by the Federal Court in Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd[62], where claims for an EGM had been held to amount to a manner of manufacture. Because Konami was not plainly wrong, his Honour considered himself obliged to follow it[63] in holding that the invention as claimed in claim 1 of the 967 patent was for a manner of manufacture[64]. It is noteworthy that the claims in Konami were for what were found to be "new and useful gaming machines and new and useful methods of operation producing new and improved results"[65]. Having found that the claimed invention was not a mere scheme, the primary judge considered it unnecessary to consider the second inquiry, so he did not make findings of fact to that effect.
[62](2015) 114 IPR 28.
[63]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 424 [104].
[64]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 424 [106].
[65]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 424 [104], quoting Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd (2015) 114 IPR 28 at 72 [223]‑[224].
The reasons of the Full Court
The Full Court held that the primary judge erred in adopting his two‑step approach, and hence in his characterisation of the claimed invention.
Middleton and Perram JJ identified the question as whether the invention disclosed in claim 1 constituted patentable subject matter[66]. Their Honours noted that the feature game was an "abstract idea" that was not itself patentable, but recognised that an abstract idea may be patentable if it is physically embodied by an invention that gives it practical application[67]. Their Honours gave the example of a mechanical poker machine which allows a game defined by particular rules to be played, but emphasised that "the patent protects the invention which is the poker machine and not the abstract idea consisting of the game which it plays"[68]. Earlier decisions involving board or card games were cited in support of that approach[69].
[66]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 576 [9], citing D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 342‑343 [12].
[67]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 578 [14]‑[16].
[68]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 578 [16] (emphasis added).
[69]See Re Cobianchi's Application (1953) 70 RPC 199 at 201; Re Peter Szabo and Associates Pty Ltd (2005) 66 IPR 370 at 379 [38], citing Official Ruling 1926A (1926) 43 RPC Appendix i; A Couple 'a Cowboys Pty Ltd v Ward (1995) 31 IPR 45. See also IP Australia, "Patent Manual of Practice and Procedure: 2.9.2.9 Games and Gaming Machines", available at < [ type="1">
Their Honours understood from claim 1 that integers 1.10‑1.12 were to be implemented by means of a computer program rather than by any mechanical apparatus, but noted that the integers of the claim did not disclose any particular computer program and did nothing more than call for the utilisation of a computer by the person implementing the invention[70]. In the upshot, their Honours held that integers 1.10‑1.12 (along with the game controller in integer 1.6) would not of themselves be a patentable invention, and none of the additional features in claim 1 could make it so, because claim 1 did not claim an advance in computer technology[71].
[70]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 578‑579 [17]‑[18].
[71]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 579 [18], 594 [94].
Middleton and Perram JJ considered that the formulation of the primary judge's first question did not involve any question of computer implementation, and that the second assumed that the scheme in question had been implemented in a computer. That is, the question whether the invention was, in truth, a computer‑implemented invention was never asked and consequently was never answered[72]. That was in error, their Honours held, because the invention proposed in the 967 patent was not so self‑evidently computer‑implemented that the issue did not require to be addressed[73].
[72]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 580 [21], 581 [28].
[73]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 580‑581 [22], [24]‑[25]. Cf Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 372 ALR 646; Commissioner of Patents v Rokt Pte Ltd (2020) 277 FCR 267.
Their Honours asked two questions: is the invention claimed a computer‑implemented invention; and if so, can the invention claimed broadly be described as an advance in computer technology[74]? As it happened, their Honours answered the first question in the affirmative, finding that an EGM is a computer and the feature game identified in integers 1.10‑1.12 is a computer‑implemented invention[75]. But their Honours' answer to the second question was "no". While their Honours said that some aspects of the 967 patent – being changes in the reel structure as identified in claim 3 and the idea of configurable symbols – may have been advances in gaming technology, they were not advances in computer technology. Fatal to the claim, in their Honours' view, was the circumstance that integers 1.10‑1.12 left it entirely up to the person designing the EGM to do the programming which gave effect to the game or games defined by those integers[76].
[74]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 581 [26]‑[29], 587 [57].
[75]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 581‑587 [30]‑[57].
[76]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 588‑589 [63]‑[65].
As to the primary judge's suggestion that if claim 1 had been for a mechanical poker machine it would have been patentable subject matter, their Honours said that the circumstance that a computer's only purpose is to give effect to abstract ideas embodied in the code which it executes, so as to "giv[e] life" to that abstract idea by that means, does not, without more, warrant the grant of a monopoly; it "would rather monopolise the abstract ideas thus embodied"[77]. The supposed anomaly that troubled the primary judge was, in their Honours' view, nothing more than a difference in the way that the implementation of abstract ideas has been approached by the courts given the availability of computer implementation. It may be said immediately that, in this respect, their Honours were clearly correct. It may readily be accepted that on the first occasion a mechanical poker machine was invented, it was patentable. But a later model of the same machine would not have been patentable simply because it allowed a new variant of poker to be played. That difference would not have relevantly differentiated it from the prototype[78].
[77]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 593‑594 [88]‑[91].
[78]See, eg, Re Crown Melbourne Ltd (2020) 161 IPR 144.
The other member of the Full Court, Nicholas J, agreed that the appeal should be allowed, but reached his conclusion by asking whether the claimed invention produced an "artificially created state of affairs". The answer to that question was said to turn on whether the claimed invention "solves a technical problem or makes some other technical contribution to the field of the invention"[79]. His Honour declined to take an "excessively rigid or formulaic approach" to the question whether a computer‑implemented scheme is a manner of manufacture, especially where there may be no clear distinction between the field to which an invention belongs, and the field of computer technology[80].
[79]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 601 [117].
[80]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 600 [116], citing Research Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378 at 403 [117]; Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27 at 49 [98].
Nicholas J accepted that "[m]ere business schemes" and abstract ideas or information have never been regarded as sufficiently tangible in character to constitute patentable subject matter, but said that they may become something patentable if the abstract ideas or information are given "practical effect and transformed into a new product or process which solves a technical problem, or makes some other technical contribution in the field of the invention"[81]. His Honour rightly said that Konami should be understood as a case in which a gaming machine or gaming system that could be seen to provide a technical solution to a practical problem in the field of gaming was proper subject matter of a patent[82].
[81]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 601 [118]‑[119].
[82]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 602 [124].
His Honour considered that the two‑step approach adopted by the primary judge was erroneous because it failed to engage with the Commissioner's submission that the invention was a "mere scheme or set of rules for playing a game implemented using generic computer technology for its well‑known and well‑understood functions". In his Honour's view, the primary judge's approach failed fundamentally to address the question whether the EGM referred to in claim 1 was, or included, a computer and whether the invention was a computer‑implemented scheme or a set of rules governing the playing of a game[83].
[83]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 605 [135].
Nicholas J observed that the specification did not identify any specific problem in the computer implementation of the new game to which the claimed invention was directed[84]. It merely described an EGM consisting of physical components that were common to such machines; neither that description, nor its capacity to trigger a feature game, was said to be anything new[85]. The instructions embodied in the game code that determined the course of the base game and the feature game represented "abstract information in the nature of a scheme or set of rules governing the playing of a game"[86]; that amounted to neither the required "artificial effect" nor an "unusual technical effect" because the code could not be regarded as transforming the way in which the EGM operated so as to make it patentable subject matter[87].
[84]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 602 [126], 606 [141].
[85]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 605 [136]‑[137].
[86]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 605 [139].
[87]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 605‑606 [140]‑[142].
Nevertheless, Nicholas J had reservations as to whether the appeal to the Full Court could finally be determined and would have remitted the proceeding to the primary judge to determine whether claim 1 of the 967 patent "is a manner of manufacture on the basis that it involves technical and functional improvements to EGMs through the use of configurable symbols of the kind more fully described in the specification"[88].
[88]Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 286 FCR 572 at 606 [144].
Aristocrat's argument in this Court
Aristocrat accepted that mere schemes, plans or methods are not patentable subject matter as a manner of manufacture, but submitted that the Federal Court decisions post‑dating CCOM and Grant fell into, and perpetuated, error by developing "contrived constraints"[89] which anomalously fetter the patentability of inventions that utilise a computer.
[89]Grant v Commissioner of Patents (2006) 154 FCR 62 at 65 [8].
Aristocrat also accepted that the assessment of manner of manufacture is to be undertaken, as a matter of substance, by reference to the subject matter of the claims and having regard to the utility of the claimed invention in the field of economic endeavour.
Aristocrat emphasised that claim 1 was not merely for a set of game rules, which it accepted was not patentable, but for a "combination of many elements that includes the functionality of the gaming machine". It was submitted that viewing the claim as a combination allows it to be assessed as a whole as a manner of manufacture. Aristocrat urged that this Court should not disturb the primary judge's finding of fact that the claimed invention was not a mere scheme.
In Aristocrat's submission, Research Affiliates and subsequent decisions[90] erroneously conflated the issue as to manner of manufacture with issues as to novelty and inventive step, thereby narrowing unjustifiably the conception of manner of manufacture. Aristocrat emphasised that each of the grounds of invalidity is distinct from the others. Aristocrat endorsed the primary judge's approach, emphasising the central importance of asking whether the claimed invention is a mere scheme separately from any question of inventiveness.
[90]Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27; Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 372 ALR 646; Commissioner of Patents v Rokt Pte Ltd (2020) 277 FCR 267.
Aristocrat also submitted that the Full Court's decision in Research Affiliates inappropriately drew upon principles of patent law from the United Kingdom and the United States that did not translate to Australian law. Aristocrat deprecated the US approach as having "resulted in chaos", in preference for the "watershed" and "celebrated judgment" in NRDC.
Aristocrat argued that the approach of Middleton and Perram JJ relied on an understanding of "computer" that could "encompass, practically, any device containing a processor and memory", which would have "significant ramifications for industry" by excluding from patentability goods from digital clocks to writing instruments to "the whole Internet of Things". It was also said to produce the incoherence that the claimed invention is not patent‑eligible, but a mechanical equivalent would be.
In Aristocrat's submission, Nicholas J was right to hold that there was no requirement for an advance in the field of computer technology, but fell into error by adopting the approach in earlier Full Court decisions and equating an "artificially created state of affairs" with a "technical innovation, technical contribution or technical effect".
The Commissioner's argument in this Court
The Commissioner submitted that, as a matter of substance and in light of the common general knowledge, the invention claimed in claim 1 of the 967 patent was properly characterised as being for a set of rules for playing a game, implemented using conventional computer technology. The Commissioner emphasised that integers 1.1‑1.6 of the claim were part of the agreed common general knowledge relating to EGMs, as at 2014.
The Commissioner submitted that the apparatus disclosed in claim 1 of the 967 patent is a conventional gaming machine having well‑known and well‑understood functions, involving the selection and display of symbols on reels and the awarding of prizes to carry out an electronic game. It was said that the substance of the claim, and what differentiated it from other conventional gaming machines, was what it disclosed only in its feature game, which, as an abstract idea, is not patentable.
The Commissioner submitted that each of the recent Full Court decisions challenged by Aristocrat correctly applied the principles in NRDC and Myriad, in recognising the distinction between an abstract idea that has been implemented using conventional computer technology, and an invention that involves some differentiation from generic computer technology to implement the idea and is distinct from the idea itself.
The Commissioner endorsed the approach of Middleton and Perram JJ, but also endorsed the approach of Nicholas J, arguing that there was no fundamental difference in principle. It was said that the two approaches were simply "two sides of the same coin", in making the distinction between an "abstract idea", on the one hand, and an invention involving some technological adjustment or advance or improvement in the apparatus, on the other.
Patentable subject matter – an idea for a game or product or process
The monopoly rights of a patentee are conferred by s 13(1) of the Act; they relevantly include the exclusive rights to, where the invention is a product, "make, hire, sell or otherwise dispose of the product". Where the invention is a method or process, those rights are to use the method or process to do any such act in respect of a product resulting from such use[91]. In Myriad, French CJ, Kiefel, Bell and Keane JJ said[92]:
"The idea of something which can be 'made' by human intervention is central and long‑standing[93] – '"[m]anufacture" connotes ... the making of something'[94]. It is an important element of the exclusive right to exploit a patented product."
[91]Sch 1 to the Act, definition of "exploit".
[92]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 344 [16].
[93]R v Wheeler (1819) 2 B & Ald 345 at 349‑350 [106 ER 392 at 394‑395]; Lane Fox v Kensington and Knightsbridge Electric Lighting Co [1892] 3 Ch 424 at 428‑429; Reynolds v Herbert Smith & Co Ltd (1902) 20 RPC 123 at 126.
[94]Blanco White, Patents for Inventions, 2nd ed (1955) at 12.
Myriad concerned product claims for an isolated nucleic acid which coded for, in the sense of having the potential to produce, an identified protein with mutations or polymorphisms indicative of a predisposition to breast and ovarian cancer. This Court held that the claim was not for a manner of manufacture and so was not a patentable invention.
The plurality said that the genetic information which was the substance of the claim was not invented by human action, but was a natural phenomenon discerned as a matter of discovery of a fact of the natural world[95]. In reaching that conclusion, their Honours emphasised that an invention is something which involves "making", whether that be a product, a process or an outcome which can be characterised as an "artificially created state of affairs"; and it must be brought about by human action[96]. The claim in Myriad failed to meet that requirement because satisfaction of an integer of the claim depended upon a discovery of a characteristic of the human being from whom the nucleic acid was isolated and not an invention of that characteristic by the person doing the isolating[97]. The point of principle of present relevance supported by that decision is that neither the discovery of a truth about the nature of things nor the devising of a scheme or game for entertainment is the invention of a manner of manufacture.
[95]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 339‑340 [6], 372 [91].
[96]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 340 [6], quoting NRDC (1959) 102 CLR 252 at 276‑277. See also 344 [16], 372 [91].
[97]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 340 [6].
In addition, the plurality in Myriad said that the purpose of the Act would not be served by according patentability to a class of claims which by their very nature lack well‑defined boundaries or have negative or chilling effects on innovation[98]. Their Honours considered that there would be a "real risk" that the chilling effect of the claims "would lead to the creation of an exorbitant and unwarranted de facto monopoly on all methods of isolating nucleic acids containing the sequences coding for the [relevant] protein"[99]. Gageler and Nettle JJ expressed a similar concern[100], as did Gordon J[101]. It has been seen that the primary judge in the present case was influenced in his characterisation of the subject matter of the claim by a concern that too "narrow" a characterisation might be "antithetical to the encouragement of invention and innovation"[102]. His Honour's concern is offset by the consideration that the characterisation of the invention favoured by his Honour carries with it the risk of chilling innovation by excluding competitors from this field of the gaming business.
[98]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 340 [7], 351‑352 [28]‑[29].
[99]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 340 [8]. See also 352 [29].
[100]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 372 [93].
[101]D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at 414‑415 [259]‑[264].
[102]Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2020) 382 ALR 400 at 423 [102].
NRDC held that a new use of an old product may be a method that is patentable if it is itself an invention. In NRDC, the manner of manufacture in question, methods for the eradication and control of weeds by the application of a known herbicide, was patentable as an invention because it produced the economically beneficial effect of a new use of the particular chemical compound, as distinct from the earlier, and different, economic effect from a different use of that compound[103]. It is necessary to appreciate that NRDC is not authority for the proposition that a claim for a new use of an old product may confer a patent monopoly over the old product. In such a case, the old product is, in light of the prior art, not relevantly a manner of manufacture that can be said to have been invented by the claimant. NRDC does not support the view that new, but unpatentable, subject matter presented or operated through generic technology is patentable[104]. It is important to appreciate that to say this is not to err, as Aristocrat claims, by conflating the issue of manner of manufacture with issues of novelty and inventive (or innovative) step.
[103]NRDC (1959) 102 CLR 252 at 277.
[104]cf Mullard Radio Valve Co Ltd v British Belmont Radio Ltd (1938) 56 RPC 1 at 20. See also Harwood v Great Northern Railway Co (1865) 11 HLC 654 at 682 [11 ER 1488 at 1499], cited with approval in Willmann v Petersen (1904) 2 CLR 1 at 20; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 480.
In N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd[105], Brennan, Deane and Toohey JJ referred to s 18(1) of the Act as identifying "the essential characteristics of a 'patentable invention' for the purposes of the Act". Focussing upon the introductory words of that sub‑section, their Honours upheld the approach of the primary judge and the Full Court in that case, whereby "independently of the specific provisions of s 18(1)(b) relating to novelty and inventive step, s 18(1)(a) must be read as containing a threshold requirement to the effect that what was claimed as a patentable invention must be a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies 1623 (Imp)"[106]. In characterising a claimed invention for this purpose, one does not trespass impermissibly into issues of novelty or obviousness by focussing on the features of the claimed invention that differentiate it from the common general knowledge. These are the features which enable one to identify what is said to be the "invention" for the purposes of s 18(1) and s 18(1A) of the Act.
[105](1995) 183 CLR 655 at 659.
[106]N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 660. See also 662‑663; Bristol‑Myers Squibb Co v F H Faulding & Co Ltd (2000) 97 FCR 524 at 531‑533 [20]‑[23].