Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents

[2022] HCATrans 103

[2022] HCATrans 103

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S40 of 2022

B e t w e e n -

ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD ACN 001 660 715

Appellant

and

COMMISSIONER OF PATENTS

Respondent

KIEFEL CJ
GAGELER J
KEANE J
GORDON J
EDELMAN J
STEWARD J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON THURSDAY, 9 JUNE 2022, AT 10.00 AM

Copyright in the High Court of Australia

MR D. SHAVIN, QC:   May it please the Court, I appear for the appellant with my learned friends, MS C.L. COCHRANE, SC, MR P.J.T. CREIGHTON‑SELVAY and MR W.H. WU.  (instructed by Gilbert + Tobin)

MR C. DIMITRIADIS, SC:   May it please the Court, I appear with my learned friend, MS E.E. WHITBY, for the respondent, Commissioner of Patents.  (instructed by Australian Government Solicitor)

MS F.C. ST JOHN:   May it please the Court, I appear with my learned friend, MS N.L. GOLLAN, for the Institute of Patent and Trade Mark Attorneys of Australia.  (instructed by Mills Oakley)

KIEFEL CJ:   Yes, Mr Shavin.

MR SHAVIN:   May it please the Court.  The issue at the core of this appeal arises out of the provisions of section 18(1A)(a) of the Patents Act.  The Court will find a set of those provisions in tab A3 of volume 1 of the joint bundle and at page 21.  The significance of the section, both subsection (1) which deals with standard patents, subsection (1A) which deals with innovation patents and the patents in certain innovation patents, but for relevant purposes there is no distinction in the provisions of the section:

Subject to subsection (2), an invention is a patentable invention for the purpose of a standard patent-

or 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 inventive step –

(c) deals with utility, and (d) deals with secret use. 

Now, the significance of going to the section as we start is because this Court has held repeatedly that when dealing with questions of a manner of manufacture one deals with that separately from other grounds going to patentability.  Indeed, it had been said by the Full Court of the Federal Court in CCOM, with Justice Gummow, Justice Spender and Justice Heerey, that manner of manufacture has become the residual of the grounds.  It is a low‑level threshold for patent eligibility. 

The fact that something might have patent eligible subject matter does not go to whether the subject matter of the patent claimed will be worth – will obtain a grant.  That is determined by reference to the other grounds of invalidity in section 18 and to satisfaction of the requirements of section 40.

So, the general principles for determining whether a claimed invention is a manner of manufacture were identified by this Court in NRDC – a decision with which I have no doubt the Court is familiar, but to which we will return – and more recently in Apotex v Sanofi, in D’Arcy v Myriad – and we will go to each of those where we find that there is a consistent theme as to the fundamental elements of a manner of manufacture.

Mere schemes – abstract ideas and intellectual information, which we might refer compendiously as “mere schemes” – have never been considered a manner of manufacture, unless applied to produce a practical and useful result which changes their character from merely intellectual information.  One finds that because, when one considers the discussion of what is a product that is contained in the body of the decision of this Court in NRDC, the focus is on the Industrial Act application.

It is a distinction between the useful arts and the fine arts.  When one has mere intellectual information, it does not have that character until it is applied.  So, one can have invention in an idea, but if the idea is not given a particular practical and useful result, an application, it is not patented.  This issue lies at the core of the contest between the parties today.

EDELMAN J:   Mr Shavin, in your submissions at paragraph 6, you say that the inventions have already been held to be “novel and innovative”.

MR SHAVIN:   In the office, in examination, your Honour.

EDELMAN J:   Thank you.

GORDON J:   Is that right, or was it an assumption made by them?

MR SHAVIN:   No.  They have been examined fully and the only objection outstanding was manner of manufacture.

GORDON J:   The way I had read it was that they assumed (b) and (c) but not determined (b) and (c).  Am I wrong about that?

MR SHAVIN:   My understanding is that that is wrong, your Honour, but I will have it checked. 

GORDON J:   Thank you.

MR SHAVIN:   My understanding is that the patent went through a full process of examination.  All issues raised by the examiner were resolved apart from the issue of manner of manufacture.

GORDON J:   Were those elements identified?  Were the facts and circumstances that gave rise to (b)(i) and (ii) being satisfied identified?

MR SHAVIN:   I am not sure that the examination reports are in the papers before this Court.  May I refer back to – someone will just check that?

GORDON J:   Thank you.

EDELMAN J:   At appeal book page 31, paragraph 84, Justice Burley says that:

The other requirements of . . . novelty, innovative step, usefulness and that there be no secret use . . . are not relevant and are for present purposes to be assumed –

MR SHAVIN:   That because there was not judicial determination on them.  I am advised, your Honour Justice Gordon, that there were no objections raised other than to manner of manufacture.

GORDON J:   I see.  Thank you.

MR SHAVIN:   So, the reason that, your Honour, it was said to be assumed by the court is it was not the subject of judicial determination, but in the course of prosecution no objection has been raised, and there was no outstanding objection.  It has been dealt with differently to the European Patent Office which might take one objection, deal with that and then come back and deal with other objections.  This is the only outstanding objection to the matter going to grant – the application being accepted.

The appeal is concerned with the essence of the threshold requirement that an invention be a manner of manufacture.  The general principles of manner of manufacture are universal in their application to all inventions not expressly excluded from patentability by the Patents Act.  The Court can see that when one returns to the provisions of section 18, one will find in subsection (2):

Human beings, and the biological processes for their generation, are not patentable inventions.

In subsection (3):

For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions.

So, the legislature has explicitly dealt with those matters which are to be excluded.  This was considered by this Court in Apotex v Sanofi, and your Honour the Chief Justice – in a joint set of reasons with Justice Crennan - discussed how it was inappropriate and, Justice Gageler, you also expressed an observation that it is not appropriate for this Court to create exclusions where the legislature has not, and where the legislature has explicitly considered a decision of the report from IPAC recommending there be no exclusions, that it not be a matter of statute.

As we will see, what happened below, in what we say was a reductio ad…..so to speak, from a series of decisions of the Federal Court starting with Research Affiliates, there has been effectively an exclusion of computer‑implemented inventions - where there is a computer, very broadly defined, and where the invention does not relate to an improvement in computer technology.  Now, that effectively creates an exclusion by the court – and we will come to that during the course of the morning.

It is our submission that this Court should not sanction an anomalous qualification applicable only to computer‑implemented inventions, which detracts from the coherence in the law referred to by Chief Justice French in Apotex and by your Honour the Chief Justice, together with Justices Heerey and Bennett, in Grant at paragraphs 23 and 29 – and we will take the Court to Grant, which is a very significant decision.

Manner of manufacture is a threshold requirement, separate – as this Court has observed in Mirabella to the distinctive requirements of novelty and inventive step.  When we revisit NRDC – and I know the Court will have a familiarity with elements of NRDC – but when we revisit the detail of NRDC, we see that manner of manufacture is focused on the useful as opposed to the fine arts – and this was considered too by this Court in Apotex. 

The Court may find Apotex in Part C of the joint bundle, at tab C14 – and if I could remind the Court of a passage in paragraph 16 from the reasons of Chief Justice French, which noted:

Following a Report of the Industrial Property Advisory Committee in 1984, the 1952 Act was repealed and the 1990 Act was enacted.  The criterion that an invention must be a “manner of manufacture within the meaning of s 6 of the Statute of Monopolies” was retained.

If I could jump a few lines:

The Committee rejected the alternative of a codified definition.  The rationale for retaining the existing criterion was reflected in the Explanatory Memorandum for the Patents Bill 1990, which said of the proposed definition of “invention”:

“The requirement in paragraph 18(a) . . . invokes a long line of UK and Australian court decisions.  It means little more than that an invention must belong to the useful arts rather than the fine arts.  The Government accepted the Industrial Property Advisory Committee’s recommendation that this flexible threshold test of patentability be retained in preference to adopting a more inflexible codified definition.”

Thus, even in the explanatory memorandum, as recited by Chief Justice French, we see that the threshold is low.  That is because, conceptually, manner of manufacture deals only with why is it that is within the realm of patentable patent eligible subject matter?  But it does not determine whether a patent should grant.  That is because there is detailed provision in section 18(1)(b) and, of course, in the terms of section 7, which require the Court to consider the invention claimed by reference to the prior art base, and by reference to particular tests evolved by this Court dealing with whether there is an inventive step…..present and dealing with the question of novelty. 

They are complex issues, the subject of a great body of learning, where this Court, particularly in Hässle v Alphapharm, and again in Lockwood (No 2), explored carefully what is meant by an inventive step.  It is by reference to those provisions that the Act enables the court to assess whether a claimed invention is patentable, rather than whether the subject matter is patent eligible.  Thus, we have a low initial threshold, and it excludes the finite.  It excludes mere intellectual information.

EDELMAN J:   Mr Shavin, and you may be coming to this, but is there not a different initial threshold which is to characterise the invention?  So, before one can even turn to manner of manufacture, one needs to have characterised what the invention is. 

MR SHAVIN:   Yes, your Honour.  When one characterises the invention, what is important is that one does not slice the claim up like a salami and look to a couple of the slices, and this Court has repeatedly affirmed that what one must do – and it is very clearly articulated by this Court in NRDC – is one looks at the whole of the claim as a matter of substance. 

Of course, that is what happened in D’Arcy v Myriad, is that the Court did not break the claim up between the isolated nucleic acid and the various mutations and polymorphisms, and say, well, we will look at these polymorphisms and we will forget these mutations.  What the Court did is it looked at the claim as a whole and identified that when you looked at the claim for its economic utility, that lay in the informational content of the nucleotide secrets found in nature, and the fact of the isolation then did not add a sufficient practical and particular application because all that had happened was a replication of that informational content. 

Now, one finds that, and we will go to it, in paragraphs 86 to 92 of D’Arcy v Myriad.  But in those paragraphs the plurality looked, as a matter of substance, at the claim, but not breaking it down.  The reason that one does not break it down is that, as in this case, we have a combination claim.  This Court identified in NRDC at page 264, to which I will take the Court in detail, but in particular Justice Aickin in Minnesota Mining and Manufacture v Beiersdorf, articulated very clearly the accepted basis of a valid combination claim is that you have a series of integers with a working interaction, and each integer can be known – can be part of common general knowledge.  The invention lies in the combination. 

As this Court said in 264 in NRDC, what it is wrong to do is look at each integer and identify whether or not it is novel.  It is wrong to say that there must be an inventive step in integers.  What is important is to look at the substance of the invention, which is the combination as a whole.  We will come back to that shortly.

KIEFEL CJ:   Nevertheless, it can sometimes be said that the invention resides in particular integers that can be identified.  You have a look at the integers as a whole but often the invention itself is identified within particular integers.

MR SHAVIN:   The inventive step might be identified in some integers, your Honour, but the invention will be the combination unless it is a mere collocation.

KIEFEL CJ:   Mr Shavin, where in your written submissions do you characterise the invention?

MR SHAVIN:   We say that the primary judge was right - it is an electronic gaming machine with a number of different elements, and what our friends do is our friends – and the majority below pointed to one integer, and we will come to this.  They come to ‑ integer 1.10 I think is identified by ‑ ‑ ‑

KIEFEL CJ:   I think the Full Court looked at particular integers in relation to their second approach, which was to see if there was some improvement in relation to the computer itself.  But in the first approach they found that the invention as a matter of substance involved the use of a particular kind of computer, being a conventional gaming machine or EGM to implement an abstract idea in the form of a scheme or set of rules for playing a game.

MR SHAVIN:   Yes, we take issue with that, your Honour, because we say that, first – and I am going to come to this in the sequence a little bit later in the morning – but the answer to your Honour’s question was paragraph 87 of our submissions.  But we say that the majority below fell into a clear error by asking a question that is not relevant.  They asked ‑ ‑ ‑

KIEFEL CJ:   But the primary judge fell into error by bifurcating the question, did he not?

MR SHAVIN:   They found that the primary judge fell into error, but their error was to ask whether it was a computer.

KIEFEL CJ:   Are you suggesting that the primary judge’s two questions is the correct approach?

MR SHAVIN:   Yes.  We say as to the second question that it may be criticised but only because he did as he must do, which was to follow the preceding Full Court, and we will explain where we think there has been a deviation by the Full Court.  But we can win on the correct question framed by the primary judge, which was is this a mere scheme?  If it is not a mere scheme you are not into the area of discussion.

GORDON J:   I thought you were suggesting that this was a combination claim and that the characterisation of your invention was not to be assessed in that way.  Am I wrong about that, Mr Shavin?

MR SHAVIN:   No, you misunderstood us, your Honour, if I might say so.  We say that the characterisation by the primary judge was correct because he looked at the claim as a whole.

EDELMAN J:   Mr Shavin, we now have three different characterisations.  We have the primary judge’s characterisation, which descended to some level of detail about some of the integers ‑ ‑ ‑

MR SHAVIN:   Yes.

EDELMAN J:   We have your answer to the Chief Justice, which was that the proper characterisation is that it is an electronic gaming machine with a number of different elements, and we have the characterisation in paragraph 87 of your submissions, which is that it is an electronic gaming machine:

which provides a feature game having specific characteristics, including that it meets relevant regulatory standards –

Which is the one that you choose?

MR SHAVIN:   In our respectful submission, your Honour, there is no material difference between any of the ‑ ‑ ‑

EDELMAN J:   There very much is.  An electronic gaming machine with a number of different elements describes almost every electronic gaming machine that exists in Australia.  The primary judge’s characterisation – which descends to a greater level of detail – might describe a much smaller subset of electronic gaming machines.  This characterisation is very important.

GORDON J:   The reason why it is important is because we know from Bristol‑Myers Squibb that you characterise it, you look at it as a whole, you do it not by reference to prior art but what is on the face of the specification, and you look for a level of inventiveness – we might have debate about what that is on the face of the specification - but you have to start with what it is you are dealing with.

MR SHAVIN:   Yes, your Honour.  May I respond to your Honour’s question in this way?  When we say, in paragraph 87, it is:

an EGM which provides a feature game having specific characteristics –

those specific characteristics are the characteristics claimed, your Honour, so that the characteristics claimed are the characteristics which are articulated with precision by the primary judge.  We did not set them all out in the paragraph.  We were under very specific space constraints for very good policy reasons, so you use a shorthand.  But we were not intending to suggest in any way, your Honour, that the characteristics of the electronic gaming machine were other than those the subject of the claim – being those articulated and identified with precision by the primary judge.

EDELMAN J:   So, your characterisation of the invention is basically everything in the claim?

MR SHAVIN:   Yes.

EDELMAN J:   That is not a characterisation, that is just repeating the whole of the claim.

MR SHAVIN:   May I respectfully differ, your Honour, in this way ‑ ‑ ‑

EDELMAN J:   So, is the primary judge wrong in his more generalised characterisation, then?

MR SHAVIN:   No.  The primary judge looked at the claim, and I will come to the primary judge shortly, but I just felt it might be of more assistance to the Court if I first deal with some of the legal principles then apply them.  But the primary judge looked carefully at the claim.  He understood it was a combination claim.  He looked at each of the integers within the claim and saw that the invention claimed was the combination of those integers, some of which were known, and some of which were new. 

But for determining the invention, the thing that is important is this Court articulated with clarity, at page 264 of NRDC – is to look at the combination itself.  It is not appropriate, in our respectful submission, to say you have an electronic gaming machine, it is a physical device, it is a combination of the working interaction between hardware and software elements, to pick the software element and say that is the thing that is new, so that is the invention.  That, in our respectful submission is wrong, because the characterisation of the invention must be by reference to the scope of the monopoly described in the claim.  It is defined in the claim.

Now, this Court in Myriad said you look at it as a matter of substance.  In Myriad the Court rejected a submission that was advanced that said this is a chemical formula and it said, when you look at the economic utility of that chemical formula you look at the whole of the claim, but it comes from the information or content that is described and is within the scope of the claim.  But it did not pass the claim, accepting some integers and ignoring others.  That would be appropriate if you have a mere collocation, but not where you have a combination.  Notwithstanding a statement to the contrary which must have fallen in error into the majority, it is plain that this claim was advanced as a combination both before the primary judge and before the Full Court and we have given the Full Court references to that in our outline.

GORDON J:   Just so I am clear, is 95 the primary judge’s finding of his characterisation of the invention to be read as consistent with 87 of your submissions?  It appears in the core appeal book page 34 at the top of the page. 

MR SHAVIN:   I think you take 95 together with 96.  So, if he is characterising – 95, the primary judge expressed the view that it is to a mechanism of a particular construction, the operation of which involves a combination of physical parts which is identified in 96 and software, also identified in 96, to produce a particular outcome in the form of an electronic gaming machine that functions in a particular way ‑ ‑ ‑

KIEFEL CJ:   Is not his Honour’s finding at paragraph 98?

MR SHAVIN:   I think, to be fair to his Honour, you take each of those paragraphs, from 95 identified by Justice Gordon, 96 which gives the detailed articulation of the integers – a reference to the expert evidence - but, in 98 the result being to the person’s skill in the art, the invention may be characterised as a machine of a particular construction which implements a gaming function.  But the elements of the gaming function are not at large or, as your Honour will appreciate, the elements of the gaming function are those that are identified within the claim.

GAGELER J:   Mr Shavin, can I ask a really simplistic question, based on an analogue analogy?

MR SHAVIN:   Yes.

GAGELER J:   If I come up with a new way of playing cards – a standard pack of cards – nobody has ever thought of it – and create a popular variation of solitaire, that would be, I take it, a scheme or an idea ‑ ‑ ‑

MR SHAVIN:   Or mere intellectual information, yes.

GAGELER J:   ‑ ‑ ‑ incapable of being patented.

MR SHAVIN:   Yes.

GAGELER J:   When I then digitise that – digitise that new way of playing the game and load it into a computer so it causes my PC to operate in a different way, does that become a combination patent – patentable invention, in your submission?

MR SHAVIN:   Only if there is a particular application.  Now, our friends in their outline, I think at paragraphs 22 and 23, observed – we say correctly – that where you have the mere rules of a game they are mere intellectual information, they are not patentable.  Where you reduce those into an apparatus, then you can have a practical application.  But it is not every practical application.  It has to be a particular application.

So, if all you have done, is you have taken the general rules – your new rules for solitaire – and identified the rules in a computer without a particular application of them, then, in our submission, that would not be sufficient to create a manner of manufacture.

GAGELER J:   The particular application is that it allows me to play solitaire in my new special way and it is very popular.  I like playing it, all my friends do.

MR SHAVIN:   Yes.

GAGELER J:   Is that enough?

MR SHAVIN:   No, your Honour.

GAGELER J:   So, what is the difference between that scenario and the present scenario?

MR SHAVIN:   Because what we have here is an electronic gaming machine which, with the combination of elements, gives you a new means of entertainment.  That new means of entertainment is not just any game of solitaire, it is here a particular application in a practical reduction.  The language of this Court and in some of the established authorities used the language of a particular application. 

It is the language that your Honour the Chief Justice employed in Grant, to which we will come, as being the defining characteristic of reducing something that is intellectual information to a manner of manufacture.  Clearly, there can be debate as to in any particular case whether what is being identified in your Honour’s new formulated rules for solitaire and the particular application.

EDELMAN J:   Mr Shavin, to give that concrete form, would that mean that if the new version of solitaire was preloaded into an existing on the market computer and sold as an existing on the market computer containing a new version of solitaire, that in your submission that would become patentable?

MR SHAVIN:   I do not think it resolves the question mark that has been raised by Justice Gageler’s analogy.  May I give a different analogy?  I know analogies are dangerous, but to clarify what it is that we say.  Let us assume we have an accounting system and it is on paper, and it is a generalised accounting system, and all we do is we convert that paper form of accounting system into a software program.  So, you have a generalised accounting system which does no more than replicate the existing paper one.

Now, putting to one side questions as to whether the accounting system would be obvious – which it almost certainly would – would it be a manner of manufacture if you have simply taken something generalised without a particular application and put it into a computer?  We say that the answer to that would be no ‑ ‑ ‑

KIEFEL CJ:   What is the particular application here?

MR SHAVIN:   Here, you have a particular form of gaming machine which gives a particular interaction to provide, in the area of gaming machine and gaming technology, an enjoyment and a commercial interest ‑ ‑ ‑

KIEFEL CJ:   But the machine is simply programmed to produce the game to trigger a further game.  That is really ‑ ‑ ‑

MR SHAVIN:   Well, it is a complicated game, but it requires on the interaction of a whole series of hardware and software elements for it to work.  This is not a computer – I know that the majority identified this as a computer, but it is not in a practical sense.

KIEFEL CJ:   But it is left to the person who programs the computer to determine how to make it work.  What is the application here?  It is a game within a machine, and it is programmed to make it work.

MR SHAVIN:   Interacting with the other elements in the machine.

KEANE J:   But do you say you have a particular application that is patentable because of integer 1.10 so that anyone else comes along with a different integer 1.10, with a different bell or whistle, and that is patentable too even though all the other integers are the same?  So, you have as many particular applications as you do games so that what makes each of these different and patentable is the game.

MR SHAVIN:   Can I respond to that in this way?  First, patentable or patent eligible - we are talking about patent eligibility - they may not be patentable, but, yes, the evidence shows that there are some 1600 patents – some to us, some to Aristocrat’s competitors – that have been granted by the Patent Office up to this point. 

Secondly, if you took the game that is identified – the gaming rules are identified in the one integer – there is no constraint on anybody using those rules by themselves.  It is only when they are used in the context of this particular combination that they would come within the scope of the claim. 

Thirdly, there has to be a working interaction between the game and the other elements of the box and, if there is, and there is a practical application of that working interaction, we say to give you a particular type of gaming machine, each would be patent eligible, leaving to one side the question as to whether they would satisfy the tests of obviousness and novelty. 

It is very important, in our respectful submission, to keep separate in one’s mind the concept of patent eligibility, patent eligible subject matter, and patentable subject matter, which satisfies all of the other requirements of sections 18 and 40 because ‑ ‑ ‑ 

KEANE J:   Patent eligible requiring an invention?

MR SHAVIN:   Simply requiring the low level that is identified in IPAC of distinguishing practical arts from fine arts.  Manner of manufacture is the residual, as Justice Gummow identified it, that is left over after you have looked at novelty, obviousness, utility, secret use.

KEANE J:   I know we might be just playing with words – you say it is a residuum.  On the other hand, in N.V. Philips the Court says it is a threshold whether there is an invention. 

MR SHAVIN:   It is a threshold. 

KEANE J:   So, it is not really a residuum.  It is - one asks at the first point – the very beginning of the analysis is to say, is there an invention, and what we know is common ground is that no one says that the devising of a scheme or a plan or a game is an invention.  It is not invented.  It is devised. 

MR SHAVIN:   If I can respond to your Honour’s first point.  Both your Honour and Justice Gummow are correct.  It depends on your historical perspective.  Initially, of course, there was no distinction in the statutes between obviousness, novelty, utility.  Obviousness and novelty were only isolated in 1952 in Australia, so that when you go back to the original Statute of Monopolies you look at the whole of the scope, and by residuum, it is a residuum that is left after all the other parts have been extracted out from what might have been encompassed within the Statute of Monopolies and dealt with specifically and separately, in the United Kingdom in the 1949 Act, and in Australia in the 1952 Act.

It is in that context that the question of residuum by Justice Gummow is accurate, but also, as your Honour says, it is a threshold question.  This Court has, on more than one occasion – Philips is one of them – identified it as a threshold.  But the threshold is simply ‑ are you in the area of discourse or patent eligible subject matter.  As the Full Court in CCOM said, a ballpoint pen is a manner of manufacture, but you would never – either at the time of that case or now – get a patent for it, because it would not be novel, and it would be obvious.  But it is patent eligible – whether you describe it as the residuum that is left after one has taken out the rest of section 18, or as a threshold.  You are simply looking at two sides of the same coin.

STEWARD J:   Mr Shavin, can I ask – is it an important element of your argument about particular application that it is not just the devising of the game, but a game that must then be amended and modified in order to comply with a significant regulatory regime in each jurisdiction?  That would also include – I imagine – things like the design of the physical machine –how big it is, how small it is – all of that all has to be within the scope of the regulations.

MR SHAVIN:   Yes, and that is what makes the combination important, your Honour.  It is, in our respectful submission, to fall into error to characterise the invention claimed as no more than the software element that has been described by the primary judge ‑ ‑ ‑

KIEFEL CJ:   But one does not lose sight of the combination – which is the machine and the game – but one tends to focus upon the game, where the machine is a conventional electronic gaming machine.

MR SHAVIN:   Yes, but that comes back ‑ ‑ ‑

KIEFEL CJ:   That is understandable, that one focuses upon it.

MR SHAVIN:   We accept that, your Honour, but not for the purpose of defining the invention.

EDELMAN J:   Mr Shavin, just so I am clear – particularly on your answer to Justice Keane’s earlier question – as I understand your position, it is that on a proper characterisation, any new game implemented in an electronic gaming machine, with any minor variation on any existing game, would be patent eligible – though it might fail for reasons of novelty or inventiveness, or other characteristics.

MR SHAVIN:   I always hesitate with the words “it is raised”, your Honour.  It got me into a lot of trouble in Myriad.  It is a very wide proposition, because ‑ ‑ ‑

EDELMAN J:   Provided it gets through the narrowest threshold of being an apparent invention.

MR SHAVIN:   And being a particular application of something.  If one had simply something that is conceptual, without a particular application into the invention, then that would not satisfy.  We will see how this was articulated in Grant, which was the clearest statement of it – though consistent, we would say, with what had gone before.

GORDON J:   It is really a debate, is it not, Mr Shavin, about the level of characterisation upfront, and the level of inventiveness that is to be disclosed on the face of the specification.

MR SHAVIN:   The level of inventiveness to be disclosed on the face of the specification, when one goes back to Microcell, is really a negative test.  Is there an admission on the face of the specification that the invention claimed is not an invention.

GORDON J:   I do not know about that.  When you look at the primary judge, it is apparent from those paragraphs that the Chief Justice took you to, that his Honour went through that process.  He stood there and he characterised the combination and then identified by reference to the integers those by analysing them what it was that might give rise to some assessment or question of inventiveness.

MR SHAVIN:   We absolutely accept that, and we embrace the way in which the primary judge approached it.  I was simply looking at the test that your Honour referred me to, which is, you assess inventiveness on the face of the specification.  When you go back to the foundation of that, which is picked up by this Court repeatedly in the more recent decisions on manner of manufacture, in Microcell the comment really was directed to, you look at the face of the specification, do you find on the face of the specification an admission that there is in fact no invention? 

That can happen – not often – but it can happen in circumstances where they might say that all of it – it is only a collocation; all of the integers were known – or that it was known, and they have just done some minor tweak.  That is where Microcell came from.  Of course, that is the discussion of Microcell that one finds in NRDC because the first part of this discourse in NRDC was to consider Microcell, which had been decided by the Court I think three months earlier in the year.  So, the two decisions are linked very closely. 

When one looks at what is on the face of the specification, one of the things one keeps in mind is the observation by IPAC recited by Chief Justice French that it is really a threshold that is determining whether or not this is in the practical arts rather than the fine arts – it is a very low threshold.  That is because the heavy lifting is done by the other provisions in section 18.

The question that is raised by this case and the preceding cases to which both parties have referred, is whether what was intended as a threshold question – but a low threshold question not duplicating the work of the rest of section 18 – has been given too much emphasis with consequences that are quite significant.  For example, if one follows – as we will come to – what the majority said below, one finds an overlap between the assessment by the majority of manner of manufacture and novelty.

GORDON J:   They accept that.  They said that expressly.  They say there is some merger of ideas.

MR SHAVIN:   There should not be, your Honour, because they are conceptually quite different.  You are not assessing novelty.  Novelty is to be assessed by reference to section 7(1) of the Act.  It is a very careful and clear articulation where this Court for many, many decades has accepted that to establish that there is an anticipation that has to be a clear disclosure of each of the integers – there has to be a direction, recommendation or suggestion in the anticipation of that which is ultimately claimed.

STEWARD J:   Mr Shavin, is this really asking the Court to adopt the reasons of Justices Dawson and McHugh in N.V. Philips?  Is that what we are really getting at here?

MR SHAVIN:   I go back further, your Honour, and say that when one looks as we come to NRDC and CCOM and Grant that in those three decisions we have a correct articulation of the principles of manner of manufacture as apply to inventions involving a computer and that what was said in CCOM with Justice Gummow, Justices Heerey and Spender, and in Grant with the Chief Justice and Justices Bennett and Heerey, we have a clear and correct articulation of principle. 

We find that articulation of principle ‑ as my learned friend, Ms Cochrane, will deal - she is going to deal with an analysis of Research Affiliates and the issues that arose in Research Affiliates.  But as she will explain, when the Court looks at the Full Court in Research Affiliates we find that on not less than three separate occasions in the judgment the court refers to and recites the analysis from Grant and CCOM in absolutely correct terms, but then goes and looks at the UK post‑1977 Act EU experience and picks up what is there the threshold test for invention, that is, a technical contribution, in a context where there are statutory exclusions – compatibility of computer programs “as such” as we will come to – and it picks up from section 101 of Chapter 35 in the United States where the discussion is about an improvement in a machine.

These concepts of a technical contribution in the computer and an improvement in the machine have been extracted from the US and from the EU in a context which is not the context, as this Court has noted on many occasions but particularly in Apotex, of manner of manufacture in Australia, particularly in the UK post the 1977 Act.

So, one has had built in as a layer on computer‑implemented inventions from Research Affiliates not merely as a guide but as we will see applied as a rule more and more rigorously until you get to the majority below, principles of inventive step of improvement that are no part of the contextual framework this Court has created for manner of manufacture from NRDC.

KIEFEL CJ:   Mr Shavin, the primary judge used those more recent Full Court decisions to adopt the two‑stage inquiry – the second inquiry.  After referring to those decisions the second part of the inquiry is if it is a mere scheme whether the computer‑implemented method is one where the invention lay in the computerisation of the method and you have said that the two‑stage approach is correct.

MR SHAVIN:   Yes.

KIEFEL CJ:   The two‑stage approach is in the second step, dependent upon and based upon the application of those cases.

MR SHAVIN:   I did say, I think, your Honour – earlier this morning – that the second stage was a stage which his Honour was bound, of course, to articulate consistent with the previous Full Courts.  As a single judge, he was bound by those Full Courts, and he did.  What we have said ‑ ‑ ‑ 

KIEFEL CJ:   But it is either right or wrong, and you said it was right.  You said his approach was correct.

MR SHAVIN:   His approach in identifying whether there was a mere scheme – I believe I said was correct.  So that is the first stage.  What I think I also said to the Court, but I stand to be corrected, that when it came to the second stage, we were critical of the formulation of the second stage, but he was bound by them.  So, we are not criticising him, because he was bound by what had gone before. 

You see, we say that we win on the primary judge because his analysis of the invention claimed as not being a mere scheme is correct, and if that is so you do not get to his second question or formulation.   If the Court is opposed to us on that, then we say that the approach by the majority below is clearly wrong, and I will come to the reasons for that, and although we say that for the reasons which I briefly alluded to but am about to develop, Justice Nicholas’ approach to technological advance is wrongly based on the European jurisprudence.  His approach of saying if there is an advance it cannot be confined to a computer, it must be in the area of technology of the invention, that is correct. 

As we said in our outline, our fallback position is that Justice Nicholas’ approach is correct, and the matter should be referred back to the primary judge because although the primary judge had a great body of evidence going to the technological advances in relation to gaming technology, he did not find it necessary to deal with and make findings in relation to that evidence.  In our original outline in‑chief, which is at paragraphs 12 and 13, your Honour the Chief Justice, we said:

It has long been accepted that mere schemes (plans or methods) are not patentable subject matter.  The Commissioner asserted that the claimed invention is “a scheme or set of rules” . . . Burley J was correct in considering that question first (and answering it in the negative).  The FFC erred in rejecting this approach.

The primary judge’s second question correctly recognises that a mere scheme is not automatically ineligible to be a MM.  A claimed invention may, nevertheless, constitute an artificially‑created state of affairs of economic utility.  However, the content of Burley J’s second question, which asks “whether the computer‑implemented method is one where invention lay in the computerisation of the method” . . . reflects the extent to which previous FFCs have fallen into error in assessing whether computer‑implemented inventions are a MM.  The correct question is whether, notwithstanding that an invention may involve a mere scheme (which is not this case), that invention nevertheless involves something more, perhaps in its implementation –

Our thought processes since we wrote that, as reflected in our three‑page summary this morning, is to reflect that the something more must actually refer to the particular and practical application ‑ ‑ ‑ 

KIEFEL CJ:   Or an advance in computer technology. 

MR SHAVIN:   Well, at that point, your Honour, we differ because at that point we say that the advance in computer technology, explicitly rejected as appropriate by the Full Court in CCOM, we say correctly, has been ‑ ‑ ‑ 

KIEFEL CJ:   On the facts of that case, though.

MR SHAVIN:   Sorry?

KIEFEL CJ:   On the facts of that case.

MR SHAVIN:   But dealing as a matter of principle when discussing the earlier English decisions.

GORDON J:   Mr Shavin, you can accept the proposition just put to you by the Chief Justice.  It may be that that is not the universe.  In other words, you can identify that there is an advancement in computer technology to give rise to patentable subject matter. You just say that is not the limit.

MR SHAVIN:   It is not the limit ‑ ‑ ‑

GORDON J:   It is an inquiry available in an appropriate case.  It just may not be an appropriate case, that is your argument.

MR SHAVIN:   Yes, but there is a risk, if I might say so, your Honour. 

GORDON J:   There is a risk in the sense that it may limit if it is the only test in relation to an invention or alleged invention involving a computer, because it may narrow the enquiry.  But if you look at patentable subject matter and accept that it is to be considered in a broad way for the purposes of the caution identified in Bristol‑Myers Squibb then you say to yourself, “Well, I have a mere idea, but because it is being implemented by an advancement in computer technology, it becomes patentable subject matter”.  That is not the only way you might get a patentable subject matter, but it is an available inquiry.

MR SHAVIN:   Yes.  Why I was indicating it has a risk to it, your Honour – and we may not be very far apart – is that it depends what goes into the concept of an invention.

GORDON J:   That is the first question.

MR SHAVIN:   A technical advance, because you are not bringing in the concept of the comparison with prior art common general knowledge, a combination of documents under section 7(3).  It has to be at a very high level and that is, is there on the face of the specification, because this Court has said repeatedly you look at the face of the specification, it is on the face of the specification an admission is not.  But if one says in looking at whether there is an advance in the working of computers, you take evidence on that, then we would say that is just wrong.  This Court has said so repeatedly since 1959. 

May I try and seek to develop some of these, because some of the questions to which the Court is directing my attention ‑ ‑ ‑

KIEFEL CJ:   What is the difference between an advance and a new method, because that has always been accepted as something which might make an invention a proper subject matter?

MR SHAVIN:   An advance and a new method?  The distinction might ‑ ‑ ‑

KIEFEL CJ:   What is the distinction between an advance in some form of technology, and a new method using known materials, which is NRDC?

MR SHAVIN:   Well, one might be inventive and the other might simply be new.  So, it is the difference between whether there is an inventive step, whether it is novel.  You might have something that is new which may not be an advance, it might just be different, but new, and still, within the test identified by this Court in omeprazole – that is Hässle v Alphapharm – picking up the Aickin test from Wellcome and going through to the “Cripps question” in determining what is a matter of routine. 

You might say it is not obvious and you might say it is new.  Whether it is an advance in technology might invoke considerations of – consideration of what was the state of technology and whether there has been an improvement, or whether people simply think it is different.  I am just quibbling with the advance ‑ ‑ ‑

KIEFEL CJ:   When the recent Full Court cases are looking at what might generally be described as advances in computer technology, that is just a general description for looking for something within the computer implementation itself which might give rise to an invention – something ‑ ‑ ‑

MR SHAVIN:   Except that where that comes from in Europe is described in Symbian – that is referred to – and is also in the joint bundle – at paragraph 9 of Symbian, the Supreme Court of the United Kingdom identified that this concept of technical contribution is the core element of inventive step, under the PCT.  So, what one is doing by ‑ ‑ ‑

KIEFEL CJ:   It is also an aspect of an invention, is it not?

MR SHAVIN:   Yes, but that is going into whether it is obvious.  That is the section 18(1)(b).

KIEFEL CJ:   I do not follow that, Mr Shavin.

MR SHAVIN:   Okay.  The test for whether you have an invention in Europe – and in the UK post‑1977 is to identify whether there is a technical contribution.  That is the test for an invention – the European equivalent of our 18(1)(b).  It is not done by reference to look at whether a person of reasonable skill in the art would move by a matter of routine steps from the prior art to the invention and determine whether the steps are routine by applying the Cripps question by saying, is there a reasonable expectation of success?  That is the test this Court has adopted as the primary test for determining whether or not the invention is obvious, that is whether there is an inventive step.

In Europe – it does not apply that test.  The test that is applied is whether there is a technical contribution.  So, the use of technical contribution is to identify the obvious from the non‑obvious.  That is not the role of manner of manufacture.  As this Court has said – I am going to take the Court to it – this Court has said manner of manufacture is separate from the more specific grounds of objection in 18(1)(b), which is obviousness and novelty, and (c) which is utility.  What is the risk from the formulation that you are putting to me is to blur and mix into manner of manufacture a requirement of inventive step which is not, in our respectful submission, the proper content of the threshold. 

May I take the Court at this stage, perhaps, to NRDC.  The Court will find this in tab 21 of Part C of the joint bundle.  I have referred on several occasions to page 264 and may I take the Court to that, because in a sense, it is the heart of this case.  I know that everyone cites the two propositions or criteria that have been discussed by this court in Myriad at page 277, but the core of the reasoning really involved page 264. 

So that after - at the foot of page 263 - adopting the arguments answered by Justice Frankfurter in Funk Brothers and Kalo Inoculant that it is not helpful to look at laws of nature, the Court then proceeds – and if I could take the Court to line 9.  So, the Court has said in the preceding sentence that there is not a helpful distinction between discovery and invention, because it is too imprecise and then the Court observes:

There may indeed be a discovery without invention‑‑either because the discovery is of some piece of abstract information without any suggestion of a practical application of it to a useful end, or because its application lies outside the realm of “manufacture”.  But where a person finds out that a useful result may be produced by doing something which has not been done by that procedure before, his claim for a patent is not validly answered by telling him that although there was ingenuity in his discovery that the materials used in the process would produce the useful result no ingenuity was involved in showing how the discovery, once it had been made, might be applied.

Now, that is a central thesis that the Court will see this morning, in our learned friends three‑page summary where they say there is no ingenuity in making it work.  We say that is a fallacy identified by this Court in NRDC.  The Court proceeds:

The fallacy lies in dividing up the process that he puts forward as his invention.  It is the whole process that must be considered; and he need not show more than one inventive step in the advance which he has made beyond the prior limits of the relevant art.  This is perhaps nowhere more clearly put than it was by Fletcher Moulton L.J. in Hickton’s Patent Syndicate v. Patents and Machine Improvements Co. Ltd. when he said of Watt’s invention for the condensation of steam, out of which the steam engine grew:  “Now can it be suggested that it required any invention whatever to carry out that idea when once you had got it?  It could be done in a thousand ways, and by any competent engineer, but the invention was in the idea, and when he had once got that idea, the carryingout of it was perfectly easy.  To say that the conception may be meritorious and may involve invention and may be new and original, and simply because when you have once got the idea it is easy to carry it out, that that deprives it of the title of being a new invention according to our patent law, is, I think, an extremely dangerous principle and justified neither by reason nor authority”.

That was adopted by the High Court on the following page, towards the end of the paragraph, just over halfway down the page on page 265.  Can the Court see starting on the right‑hand side:

It is irrelevant, even if true –

It is about 10 lines from the end of the paragraph:

It is irrelevant, even if true, that once the discovery was made that the chemicals produce a lethal reaction when applied to the weeds and produce no such reaction when applied to the crops there was no more ingenuity required in order to show how the process might be performed.  The point that matters is that a weed‑killing process is claimed which is distinguished from previously known processes by a feature the suggestion of which for such a process involved a step plainly inventive.

Now, the essence that we are seeking to draw from this analysis at 264 is that you have here the proper articulation of the approach for a combination claim, the proper approach to looking at what is the invention, the proper approach to identifying the issue raised by our friends as to whether there must be invention both in the formulation and in the implementation.  The Court here has said no.  These principles were properly picked up by the Full Court in Ariosa which was decided just a few months before the decision was handed down in this case, and that is to be found at D27 in the joint bundle – that is in part D at tab 27.

At paragraphs [112] to [114] on page 744 of the bundle the Full Court comprising Justices Burley, Nicholas and Middleton, so the primary judge in our case and Justice Nicholas who was in dissent in the Full Court below, all of them agreed about this.  At [112] the court refers to the passage to which I have just taken the Court at 264 and continues with the balance of the passage in paragraph [113].  Then the court observes:

Three points of emphasis may be noted from these passages.  First, the distinction between mere discovery and an invention lies in its practical application to a useful end.  Secondly, it is important that the invention be considered as a unitary concept, not segregated artificially into parts.  The invention may arise from an idea and then be applied in a perfectly well known way, and yet the combined effect of the idea and its application may result in patentable subject matter, as arose from the example described in Hickton’s Patent ‑

The approach of the applicants in the present appeal which dealt with non‑invasive prenatal diagnosis:

which seeks to disaggregate the discovery of cffDNA in maternal plasma or serum from the method used to harness that discovery, tends to overlook these matters.  Thirdly, an invention may reside in an abstract idea, such as the condensation of steam that is then put to a useful end, even though the way of putting it to that end can be carried out in many useful ways, all of which are otherwise known.

Now in our respectful submission, what one then has, we say here, is an invention which comprises a combination of hardware and software elements, which is a new electronic gaming machine.  It might have within it a software step which is completely new, but the implementation of, once known, is not new.  But that does not detract from its constituting a manner of manufacture.

GAGELER J:   So, an invention can lie in an idea.  That is what I am taking from both of the passages that you have read from.

MR SHAVIN:   Yes.

GAGELER J:   Is that really descriptive of what is going on in our case? I mean – what is the idea, what is the inventive idea here?

MR SHAVIN:   The inventive idea is the creation, the utilisation of this machine to create a completely new and different type of game, never before seen.  That is why it is such a valuable game.  The evidence below talks about the traditional gaming machine had five reels, had three rows in the window, and you looked at a combination of the 15 points.  But what you have in the game that is here is something quite different because you no longer are limited either to three rows or five reels.  The way in which you have it can be in blocks, which are not in rows or reels and are not confined to the single width of a reel.  You then have the quote “element of the configurable symbols”.

So that instead of just having the same symbols on a reel, during the course of the game, the values on the symbols change and they create all sorts of different incentives and layers in the game.  So, it has been a completely novel concept of an electronic game and that concept of the electronic game has had a particular application in this electronic gaming machine to enable it to work. 

Yes, you can have variations.  So, so you can have different flavours of the game, whether they are crowns, or they are pearls, or whether it tells some sort of different story, but the family of game which has a particular application is to take this software – which is incredibly complicated mathematically – to satisfy the regulatory requirements.

As one can understand – because you have to have a minimum return to player, a minimum return to venue, which regulate the risks, so the mathematics behind it is enormously complicated.  But, what you have in the invention is the conceptualisation of a game put within the body and confines of an electronic gaming machine where every part of the machine – the ability to control it, the ability of the player to manipulate it, the ability to take bets, all of this combined interactively to give an entertainment device that is new, and that is different.  It is a particular application of the invention into this gaming machine.  Now that, in our respectful submission, is what makes it ‑ ‑ ‑

KIEFEL CJ:   I am sorry.  Did you say it is a particular application of this invention into the gaming machine?

MR SHAVIN:   “Within”, I should have said, your Honour.  Can I withdraw the “into” because we do say, in fact ‑ ‑ ‑

KIEFEL CJ:   But that is to say the invention is the game.

MR SHAVIN:   The invention is the gaming machine. 

KIEFEL CJ:   The gaming machine does not make the game.  The game is effectively inserted into the machine. 

MR SHAVIN:   The gaming machine is part of the machine – the game is part of the machine.

KIEFEL CJ:   It becomes part of it once it is programmed and therefore put into it. 

MR SHAVIN:   Yes, but the invention – so you have the concept and you have the application.  You have the concept of the ‑ ‑ ‑ 

KIEFEL CJ:   The application is the programming into the machine. 

MR SHAVIN:   Forming part of the combination of the working interaction between ‑ ‑ ‑ 

KIEFEL CJ:   The programming can take any kind of form – the code can be written whichever way ‑ ‑ ‑ 

MR SHAVIN:   It should be, your Honour, because as this Court identified in Data Access, there is a fundamental distinction between the functionality of software, which is the proper subject matter of a patent claim, and the expression of the code, which is the proper subject matter of copyright.  So, when it encompasses – the Court will have noticed in our notes - there is a discussion, or there is no particular form of the software, neither should there be because as this Court identified in paragraph 20, but really 20 to 24 of Data Access, the role of a patent claim is to limit functionality – you describe functionality – you do not, in a patent claim, put your source code.  That would be an expression of the functionality on which there might be copyright, but it would form no part of a patent claim to have the expression of the functionality as the claim.

What the claim does is identify the functional elements which define the monopoly of the invention, the invention being the combination of the hardware and software to produce a new electronic gaming machine – and one which the evidence showed was incredibly successful around the world.  But that is because it is something conceptually new with a particular practical application. 

EDELMAN J:   Mr Shavin, I do not want to hark back again to characterisation, but the conceptually new integers, are they the bonus game and the configuration of the symbols or is it something more than that?

MR SHAVIN:   It is in combination with the rest of it.  For example, some of the elements were the subject of the Konami case, which is referred to below, which Justice Nicholas found was a manner of manufacture and patent was granted.  But I hesitate ‑ ‑ ‑

EDELMAN J:   I appreciate it is the combination, I am just asking about what the novel elements within that combination are.

MR SHAVIN:   There are certain claims – I think it is claim 3, that is focused upon the configurable symbols, but to say that is the inventive element is, I think, inaccurate and overly simplistic.  I am not being critical, your Honour, but it is a more complicated invention than that, but that is an element of it which is the subject of a dependent claim.

We note in passing that the question of newness is determined on the face of a specification.  Your Honours Justice Gageler and Justice Nettle said that at 147 in Myriad, and we have referred to Ariosa, but we refer to some of the other discussions, all of which are consistent on that point, from Microcell onwards.  We find that at page 262 in NRDC at lines 2 to 5:

much of the judgment at first instance and of the judgment of the Full Court appears to attribute misplaced significance to the conclusion reached in NRDC [relating to] an artificially created state of affairs of economic significance.

Again, it is emphasised that that is not the test.  In particular, it was posed in relation to a process or method claim in NRDC and “it does not follow that it is enough to found a claim for a monopoly” that those requirements are satisfied.  That is at the end of paragraph 167.

GAGELER J:   Well, here you have – as with any business scheme, you can have economic significance, so that factor really does not take you anywhere, and begs the question of what an artificially created stated of affairs is, I suppose.

MR DIMITRIADIS:   Yes, your Honour, and whatever, it is not an impact on human intellect.  That is not an artificially created state of affairs.  The possible results of the application of this invention, as noted by the majority of the Full Court, are either an increase in player engagement or enjoyment or, potentially, the consequence of that which is encouraging players to wager more by playing for longer or betting more.  Neither of those things

are relevantly an artificially created state of affairs.  If they were, and that was sufficient for patentability, then business schemes and financial schemes would be patentable.  But they are not.  So, the advertising scheme in Rokt would be patentable on the same basis.  But it is not.

Your Honours, just to conclude Myriad very briefly.  Your Honour Justice Gordon in paragraph 272, which is at CLR 416, referred to NRDC.  Sorry, I should first refer your Honours to paragraph 221 of Justice Gordon’s reasons where your Honour referred to the right question in NRDC, the same question that was referred to in the other reasons, and then in 272, referred to the reference to the “vendible product”, or “artificially created state of affairs of economic significance” criterion in NRDC and, in 273, referred to CCOM applying that.  In paragraph 275, your Honour made the point that:

these passages are not a statute . . . they must be read and understood in their context. 

In 276, your Honour observed that the concept of an artificially created state of affairs was used in NRDC in relation to a process, and the result of that process.  In 278, your Honour emphasised that it is necessary to have regard to the:

subject matter of the claims.

In paragraph 279, in the part at the top of CLR 418, in applying that your Honour referred to the claims:

As a matter of substance . . . focuses on the existence of one or more elements of an identified –

genetic code.  Again, having regard to the substance of the invention, none of that involves discounting integers of the claim.  One has regard to the whole of the claim but understands where the substance of it lies.  That is the approach which we submit supports the Full Court in this case.  I see the time, your Honour.

KIEFEL CJ:   Yes, thank you.  The Court will adjourn until 9.45 am tomorrow.

AT 4.14 PM THE MATTER WAS ADJOURNED
UNTIL FRIDAY, 10 JUNE 2022