Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited

[2013] FCA 163

FEDERAL COURT OF AUSTRALIA

Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163

Citation:

Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163

Parties:

DYNAMITE GAMES PTY LIMITED (ACN 102 269 732) v ARUZE GAMING AUSTRALIA PTY LIMITED (ACN 002 907 851) and ARUZE GAMING AMERICA INC

File number:

NSD 719 of 2010

Judge:

EMMETT J

Date of judgment:

4 March 2013

Catchwords:

PATENTS  – infringement – standard patent and innovation patent – where claimed invention provides an electronic gaming apparatus having novel features for enhancing gameplay interest – where claimed invention has components for monitoring gameplay and the occurrence of a game event – where claimed invention has an event guarantee component for guaranteeing that a game event will trigger within a set amount of gameplay, including a trigger component and an indicator component – where indicator component is for indicating the amount of gameplay remaining before a guaranteed game event will trigger – construction of the patent claims – cross-claim for invalidity

PATENTS – s 18(1)(a) of the Patents Act 1990 (Cth) – whether claimed invention is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies

PATENTS – validity – requirement of novelty – whether claims not novel when compared with prior art base

PATENTS – validity – requirement of inventive step for standard patent – requirement of innovative step for innovation patent – whether patents involved inventive and innovative steps respectively

Legislation:

Patents Act 1903 (Cth)
Patents Act 1952-55 (Cth)

Patents Act 1990 (Cth) ss 7(1), 7(2), 7(3), 13, 18(1)(a), 18(1)(b)(i), 18(1)(b)(ii), 18(1A)(a), 18(1A)(b)(i), 18(1A)(b)(ii), 40
Statute of Monopolies 1623 (Imp) (21 Jac 1 c 3) s 6

Cases cited:

Aktiebolaget Hassle v Alphapharm Pty Limited (2002) 212 CLR 411
Burroughs Corporation (Perkin’s) Application [1974] RPC 147
Ccom Pty Limited v Jiejing Pty Limited (1994) 51 FCR 260
Commissioner of Patents v Microcell Limited (1959) 102 CLR 232
Dura-Post (Aust) Pty Limited v Delnorth Pty Limited (2009) 177 FCR 239
ICI Chemicals and Polymers Limited v Lubrizol Corp Inc (1999) 45 IPR 577
Lockwood Security Products Pty Limited v Doric Products Pty Limited (2007) 235 CLR 173
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253

Date of hearing:

14-16, 19-20 November 2012

Place:

Sydney

Division:

GENERAL DIVISION

Category:

Catchwords

Number of paragraphs:

223

Counsel for the applicant:

ABS Franklin SC with ADB Fox

Solicitor for the applicant:

Middletons

Counsel for the respondent:

AJL Bannon SC with NR Murray

Solicitor for the respondent:

Slater & Gordon

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 719 of 2010

BETWEEN:

DYNAMITE GAMES PTY LIMITED (ACN 102 269 732)
Applicant

AND:

ARUZE GAMING AUSTRALIA PTY LIMITED (ACN 002 907 851)
First Respondent

ARUZE GAMING AMERICA, INC
Second Respondent

AND BETWEEN:

ARUZE GAMING AUSTRALIA PTY LIMITED (ACN 002 907 851)
First Cross-Claimant

ARUZE GAMING AMERICA, INC
Second Cross-Claimant

AND:

DYNAMITE GAMES PTY LIMITED (ACN 102 269 732)
Cross-Respondent

JUDGE:	EMMETT J
DATE OF ORDER:	4 March 2013
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The application be dismissed with costs.

2.The applicant pay the respondents’ costs of the application.

3.Australian Standard Patent No 2004281073 be revoked.

4.Australian Innovation Patent No 2009101338 be revoked.

5.The cross-respondent pay the cross-claimants’ costs of the cross-claim.

Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 719 of 2010

BETWEEN:

DYNAMITE GAMES PTY LIMITED (ACN 102 269 732)
Applicant

AND:

ARUZE GAMING AUSTRALIA PTY LIMITED (ACN 002 907 851)
First Respondent

ARUZE GAMING AMERICA, INC
Second Respondent

AND BETWEEN:

ARUZE GAMING AUSTRALIA PTY LIMITED (ACN 002 907 851)
First Cross-Claimant

ARUZE GAMING AMERICA, INC
Second Cross-Claimant

AND:

DYNAMITE GAMES PTY LIMITED (ACN 102 269 732)
Cross-Respondent

JUDGE:	EMMETT J
DATE:	4 march 2013
PLACE:	SYDNEY

REASONS FOR JUDGMENT

INTRODUCTION........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...	[1]
THE CLAIMED INVENTION........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......	[5]
The Specification........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ..	[6]
The Relevant Claims........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....	[30]
WITNESSES........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....	[38]
PRIOR ART........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .....	[54]
Clarke........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........	[55]
Okada........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........	[60]
Stupak........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........	[64]
Shuster........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......	[66]
Futurity Bell........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ......	[76]
Money Back........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......	[77]
Cashcade........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...	[80]
Scatter Rug........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........	[83]
VALIDITY OF THE PATENTS........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....	[90]
Inventive Step/Innovative Step........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...	[95]
Common General Knowledge........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...	[103]
Specific Claims of the Standard Patent........ ........ ........ ........ ........ ........ ........ ........ ...	[114]
Specific Claims of the Innovation Patent........ ........ ........ ........ ........ ........ ........ ........	[145]
Conclusion as to Inventive/Innovative Step........ ........ ........ ........ ........ ........ ........ .....	[150]
Manner of Manufacture........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ......	[151]
Lack of Novelty........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....	[173]
Other Grounds of Invalidity........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......	[186]
INFRINGEMENT........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ...	[187]
CONCLUSION........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........	[220]
APPENDIX 1: CLAIMS OF THE STANDARD PATENT........ ........ ........ ........ ........ .	[221]
APPENDIX 2: CLAIMS OF THE INNOVATION PATENT........ ........ ........ ........ .....	[222]
APPENDIX 3: PARTIES’ TABLES CONCERNING NOVELTY........ ........ ........ ....	[223]

INTRODUCTION

1. This proceeding is concerned with Australian standard patent No. 2004281073 (the Standard Patent) and Australian innovation patent No. 2009101338 (the Innovation Patent).  The Innovation Patent is a divisional patent of the Standard Patent.  The claimed invention of both Patents is for “gaming apparatus and systems”. 

2. The applicant, Dynamite Games Pty Limited (Dynamite), is registered as the owner of both the Standard Patent and the Innovation Patent (together, the Patents).  Dynamite claims that the first respondent, Aruze Gaming Australia Pty Limited (Aruze Australia), and the second respondent, Aruze Gaming America, Inc (Aruze America), have infringed both of the Patents and threaten to continue to do so.  Aruze Australia and Aruze America (together, Aruze) deny that there has been, or will be, any infringement. 

3. Aruze have also filed a cross-claim seeking revocation of both of the Patents on the basis that the invention as claimed in each of the claims of the Patents is not a patentable invention within the meaning of s 18 of the Patents Act 1990 (Cth) (the Act).  They contend that none of the claims is for a manner of manufacture, that the claimed invention is not novel and that the claimed invention does not involve an inventive step or an innovative step.  They also contend that the claims of the Patents are not clear and succinct and that the claims are not fairly based on the matter described in the body of the respective specifications. 

4. The claimed priority date of the Standard Patent is 17 October 2003.  There is no dispute about that date.  Since the Innovation Patent was filed as a divisional application of the Standard Patent, it claims the same priority.  There is no dispute about its entitlement to that priority.  However, since it is a divisional application, its entitlement to the priority date of the Standard Patent requires that the Innovation Patent cannot be construed so as to claim anything not fairly based on the Specification of the Standard Patent. 

   THE CLAIMED INVENTION

5. It is desirable to describe the claimed invention. That will entail reference to the complete specification of the Standard Patent (the Specification), as well as the claims alleged to have been infringed. 

   The Specification

6. The Specification states that the claimed invention relates to electronic gaming machines and to networked gaming systems, such as internet-based gaming systems. It says that gaming machines have been a popular form of entertainment for many years and that their popularity has been enhanced by the advent of electronic gaming machines and computer-based gaming systems, such as are provided over the internet.  Many types of games may be played, including standard slot machine-type games with spinning reels, poker machines, keno, bingo, blackjack, roulette, pachinko, and the like.  A player will typically place a bet, press a button or pull a lever to begin a game.  The player will win or lose, based upon the gaming machine’s play algorithm and random number generator. 

7. The Specification says that an aim of the claimed invention is to provide gaming apparatus having novel features for enhancing gameplay interest.  The Specification states that, viewed from one aspect, the claimed invention provides gaming apparatus, including:

   ·a component for monitoring game play;

   ·a component for monitoring the occurrence of a game event; and

   ·an event guarantee component for guaranteeing that a game event will trigger within a set amount of gameplay, such component to include:

   ·     a trigger component for triggering a game event when the set guarantee gameplay amount is reached without the monitored event having been triggered; and

   ·     an indicator component for indicating the amount of gameplay remaining to be played before a guaranteed game event will trigger.

8. The Specification states that gameplay measurement can be based on:

   ·the number of games played, such as the number of spins of a slot machine or the number of hands of a card game played; or

   ·the amount of bets laid, such as the amount of credits laid, the amount of lines or hands played; or

   ·some other parameter indicative of an amount of gameplay.

   A game event may be of any suitable kind: it may be a type of win event or a type of feature event.

9. A win event may relate to a win of a particular amount, such as a set amount.  Alternatively, a win event could relate to a win under a particular circumstance, such as a flush or the like at poker, or a set combination of slot machine reel symbols.  A win event could also relate to a jackpot, which could be, for example, a stand-alone or linked jackpot system.  The jackpot win could be of a fixed or progressive kind.

10. A feature event could relate to the occurrence of a particularly valuable play element, such as a wild card or wild symbol.  A feature event could further relate to a bonus or extra event that provides some added benefit to the player.  For example, it could be a free play scenario, a re-spin, a pick‘n’win, or a game play that returns higher than usual wins.  It may be a second-screen type feature, which may involve a play that is extraneous to a main or basic game.  The feature event could be a luck or skills based feature. 

11. The Specification asserts that the claimed invention provides a way of increasing the interest of a game.  It says that the claimed invention provides a guarantee feature that can be of benefit to a gaming machine operator, in that it promotes the use of the operator’s machine, and can be of benefit to players, who can thereby know that an event of benefit to the player will certainly occur within an indicated amount of gameplay.

12. The monitored event and the guaranteed event are preferably the same type of event, so that a player knows that, for example, if a “4 of a kind” does not occur normally within a set time, it will definitely occur at the end of the set amount of gameplay.  Alternatively, for example, the player knows that a free game will definitely occur by a set amount of gameplay and will possibly occur beforehand.  However, the monitored event and the guaranteed event do not have to be the same event and a specific event need not be specified.  For example, the monitored event and the guaranteed event may be one of a number of possible events, such that, for example, if none of the possible events occurs within a set amount of gameplay, then one of a number of those or other events will be triggered to occur.

13. The indicator component of the claimed invention is of particular relevance in relation to the allegation of infringement of the Patents.  The Specification states that the indicator component may take any suitable form.  It may be a numerical display that provides a countdown from an initial gameplay amount.  Alternatively, it may take the form of a gauge, for example, with a pointer and a scale.  It may specify the specific event that is guaranteed or the type of event that is guaranteed.  The amount of gameplay required for the guarantee to trigger may be determined in any suitable manner.  It may, for example, be a set amount or it may be determined randomly within a set range.  It may be varied in accordance with gameplay.  For example, it may be dependent on the winnings or bets taken over a preceding period of play.  Preferably, the guarantee gameplay amount will be reset when a monitored event occurs during normal play or when the guaranteed event occurs.  The indicator will then be reset to an initial gameplay amount.  When reset, the guaranteed event may take a different form from that of the previous guarantee.  That may be determined randomly or in accordance with a preset sequence or may vary based on previous gameplay. 

14. Preferably, the apparatus of the claimed invention will include a component for determining the play parameters for the guarantee feature.  Thus, when a bonus game or the like is triggered, the play parameters may, for example, be the number of lines or hands played and the amount bet on each line or hand.  When a win event is triggered, the play parameters may be the amount paid out or the win type.  The play parameters may be determined based on a player’s play history, and may be an average of a player’s play parameters over time.

15. In one preferred embodiment of the claimed invention, the gaming system may provide more than one guarantee feature, and may include more than one event guarantee indicator.  Thus, one indicator may display the amount of gameplay remaining until one event is guaranteed to trigger, and another indicator may indicate the amount of gameplay remaining until another event is guaranteed to trigger.  More than two guarantee features may also be used.  Such guarantee features may be reset independently or together.

16. The Specification asserts that the claimed invention may be applied to any suitable type of gaming system or platform.  It can apply to stand-alone gaming apparatus, for example, electronic gaming machines, such as video gaming machines, as well as gaming machines that are linked together by means of a network such as an intranet.  It can also apply to gaming systems provided through computing or other electronic devices, such as personal computers, mobile telephones, digital televisions, and over the internet or other communications networks.

17. The Specification asserts that the claimed invention may be applied to gaming apparatus that plays any suitable game, for example, slot machine-type games, poker, keno, blackjack, bingo, roulette, pachinko, and the like.  When part of a network, the guarantee feature of a particular gaming device may be based on gameplay only of that particular device or may be based on the gameplay of other linked devices as well.  The Specification asserts that the claimed invention extends to central controls or servers and to remote terminals or clients that are configured to carry out the feature guarantee of the claimed invention.

18. The Specification then describes six further aspects of the claimed invention.  Five of those further aspects described refer to the indicator component in different, but similar, language, as follows:

    ·a guarantee indicator component for providing a guarantee indicator that indicates the amount of gameplay that must occur before the guaranteed event is triggered;

    ·a method of operating gaming apparatus including the step of indicating the amount of guarantee gameplay remaining before a guaranteed event is triggered;

    ·an indicator component of an event guarantee component for indicating the amount of gameplay remaining to be played before a guaranteed game event will trigger;

    ·a guarantee feature for indicating to a user the amount of gameplay remaining before the guarantee feature is triggered; and

    ·an indicator means, as part of an event guarantee means, for indicating the amount of gameplay remaining to be played before a guaranteed game event will trigger.

19. The Specification then describes embodiments by reference to accompanying drawings.  Figure 1 describes an electronic gaming machine that includes various standard components, such as:

    ·     a controller for controlling the operation of the machine and the games run on it;

    ·     a coin, token or card input for receiving bets;

    ·     a coin, token or card output for paying out winnings; and

    ·     a display for displaying game screens, and player inputs allowing player interaction.

    Player inputs may include buttons, which may be provided as part of the display using a touch-screen.  The machine may be a stand-alone machine, or may be networked with other machines or a control centre, by means of a suitable communications network, in order to play networked games such as a linked jackpot. 

1. In use, the machine will display an initial gaming screen on the display.  A player will insert coins, tokens or a payment card into the machine and will press a button to initiate play.  How matters then proceed will depend upon the type of game being played.  For example, in a slot machine-type game, the machine will display virtual reels of symbols, and will spin and stop those reels in various win and lose symbol combinations on a payline, in accordance with the machine’s gaming algorithm and random number generator.  Alternatively, in a poker-type game, a player will receive a number of cards with which to play for a winning hand.  The player may interact with the machine by means of buttons, so as to spin or hold reels, or to obtain and throw away cards.  Whatever game is played, a common element will be win events, such as particular symbol or card combinations, which pay a prize or jackpot.

2. The Specification states that, in order to increase interest, a game will often include feature events that may or may not relate directly to the game being played.  Such feature events generally provide a bonus of some sort.  The feature events may include, for example, one or more free games, a re-spin, which is similar to a free game but with one or more reels held, a pick‘n’win, the chance to play for higher winnings, and the like.  The feature events may be luck or skills based.  The feature events may be provided as second-screen features that display on a new screen and may be extraneous to the basic game. 

3. The win events and feature events can be arranged to occur randomly or under a particular set of circumstances, such as a set symbol or card combination.  They may also occur due to an accumulation of circumstances across a number of games.

4. The Specification states that, in accordance with one embodiment of the claimed invention, the machine includes an event guarantee component, such as within the gaming algorithm.  The event guarantee component monitors one or more game events to determine whether they are triggered or not, and guarantees that a particular game event, or at least one of a number of possible game events, will trigger within a set amount of gameplay, if the standard conditions for triggering of the monitored game event or events are not met within that period of play.  The machine generates a guarantee indicator on the display that indicates to a player the guarantee count, being the amount of gameplay remaining before the guaranteed event will be triggered.  The guarantee indicator may, for example, be a numerical countdown or a virtual gauge or the like, on the display.  Gameplay may be measured by a measurement of user interaction with the gaming apparatus.  For example, it may be based on the number of games played or the amount of bets wagered.

5. The Specification asserts that, in accordance with that embodiment, a guarantee feature is provided by which a player or potential player will know the maximum amount of gameplay that can occur before at least one event is triggered.  That amount will decrease as play continues.  A player or a potential player will know that, even if the player does not achieve the standard conditions for a monitored game event, a guaranteed game event will trigger at the end of the guarantee count. 

6. In another embodiment of the claimed invention, the monitored event and the guaranteed feature event are the same event, such that a player knows that if the player does not achieve the event normally, the player will achieve it within the guarantee count.  However, the monitored event and the guaranteed event do not need to be the same event.

7. In another embodiment, the indicator will count down from an initial number that may represent the number of games that must be played before an event is guaranteed to trigger, or the remaining bet value that must be placed before an event is guaranteed to trigger.  If a monitored event occurs before the guarantee count is finished, the count is reset.  Thus, if a player triggers an event prior to the end of the guarantee count, the guarantee count is restarted.  The event or events guaranteed may be changed at each reset, either randomly or in a set sequence or depending on game play.  The drawings depict a screen that includes a guarantee indicator in the form of a numerical display, for example, of a countdown from an initial number of spins.

8. Figure 3 shows an embodiment of the claimed invention in which a pair of guarantee indicators is provided.  In that embodiment, one guarantee indicator relates to a feature event and the other relates to a winning event.  The monitored event is the same as the guaranteed event.  The figures 105 and 76 appear on the depiction of the two indicators in Figure 3.  One indicator relates to a free game feature, which will definitely occur within 105 spins, if not earlier.  The other indicator relates to a “5 of a kind” win, which will definitely occur within 76 games, if not earlier.  In the embodiment depicted in Figure 3, the guarantee indicators also display the play parameters under which the guarantee events will occur.  For the first indicator, the free game will play using 20 lines at a bet of 5 credits per line.  For the second indicator, the five of a kind will be awarded at 3 credits per line.  Those details are depicted in the drawing.

9. The Specification provides that the play parameters may be chosen in any desired manner and may be fixed or may be randomly generated within certain ranges.  It says that, in a preferred embodiment, the play parameters are determined based on a player’s play history.  Thus, the number of lines played or the amounts bet may be averages of the lines played and bets placed over a number of the player’s previous games.  In such a case, the guaranteed play parameters displayed may vary with play.  The credits required for the play parameters are preferably not deducted from a player’s stake.  That is to say, the guaranteed event is a free event.  However, it would also be possible to deduct the bet amounts from the player’s stake.  In that case, the guaranteed event may pay out at higher odds to give the event a bonus aspect. 

10. The Specification states that the guarantee indicator could be a gauge, such as a pointer on a scale.  The indicator need not be displayed on the screen and can be displayed separately or may form a physical gauge or the like.  The guarantee indicator need not always relate to the same game event and can change to the monitoring of a different game event depending, for example, on the state of play. 

    The Relevant Claims

11. Dynamite has confined its allegations of infringement to some only of the claims of the Standard Patent and the Innovation Patent.  It alleges infringement of claims 6, 9, 12, 13, 14, 18, 20, 21, 23, 26 and 27 of the Standard Patent and claims 4 and 5 of the Innovation Patent.  However, since some of those claims are dependent upon earlier claims, it may be necessary to examine claims other than those in relation to which infringement is alleged.

12. There are 7 independent claims of the Standard Patent of a total of 38 claims.  Claims 1, 31, 33, 34, 36, 37 and 38 of the Standard Patent are independent claims.  Although, as a matter of language, there are 7 independent claims of the Standard Patent, it is apparent that claim 31 is in the same terms as claim 1, except that it is for other apparently inconsequential variations described below.  Claim 34 is for gaming software, including components described in the same terms as claim 1.  Claim 37 is for an electronic game in which a bet is placed, game events occur and wins are returned, and gameplay and game events are monitored, and includes a guarantee features, wherein if a monitored event does not occur within a predetermined amount of gameplay, a guaranteed event is triggered.  The integers of claim 37 otherwise coincide with those of claim 1.  Claim 38 is identical to claim 1, except that components are described as means.  Thus, in substance, there are 3 independent claims, being claims 1, 33 and 36.

13. There is one independent claim of the Innovation Patent of a total of 5 claims, being claim 1, which is expressed more generally than claim 1 of the Standard Patent.  Specifically, claim 1 of the Innovation Patent lacks the integer of an indicator component. 

14. The claims of the Standard Patent are set out in Appendix 1 to these reasons.  The claims of the Innovation Patent are set out in Appendix 2 to these reasons.  It will be necessary to consider all of those claims in the context of the validity of the Patents, although no allegation is made of infringement of any of the independent claims of either of the Patents. 

15. Claim 1 of the Standard Patent is for a gaming apparatus that includes:

    ·a component for monitoring game play;

    ·a component for monitoring the occurrence of a game event; and

    ·a component for guaranteeing that a game event will trigger within a set amount of gameplay, being an event guarantee component that includes:

    ·a trigger component for triggering a game event when the set guarantee gameplay amount is reached without the monitored event having been triggered; and

    ·an indicator component for indicating the amount of gameplay remaining to be played before a guaranteed game event will trigger.

    Thus, there are three parts of claim 1, each described as a component.  The third component, the event guarantee component, itself has two parts, being the trigger component and the indicator component.

16. Claim 33 is for a method of operating gaming apparatus that includes the following 4 steps:

    ·monitoring gameplay;

    ·monitoring the occurrence of a game event;

    ·triggering a guaranteed event if the monitored event does not occur within a set amount of gameplay; and

    ·indicating the amount of guarantee gameplay remaining before a guaranteed event is triggered.

    Step one of the method of claim 33 corresponds with the first component of the gaming apparatus of claim 1.  Step 2 of the method of claim 33 corresponds with the second component of the gaming apparatus of claim 1.  Step 3 of claim 33 corresponds with the first sub-component of the third component of the gaming apparatus of claim 1.   Step 4 of the method of claim 33 corresponds with the second sub-component of the third component of the gaming apparatus of claim 1.

17. Claim 31 is in the same terms as claim 1, except that it is for a gaming system, rather than a gaming apparatus, and, instead of describing an event guarantee component that includes a trigger component and an indicator component, it describes an event guarantee component in the same terms as the trigger component of claim 1, and describes a guarantee indicator component in the same terms as those describing the indicator component of claim 1.

18. Claim 36 is for apparatus including:

    ·a gameplay monitor for monitoring player interactions with the apparatus;

    ·an event monitor for monitoring the occurrence of a game event; and

    ·a guarantee feature for:

    ·triggering a gaming event if the monitored event has not occurred within a set amount of gameplay; and

    ·indicating to a player the amount of gameplay remaining before the guarantee feature is triggered.

    Thus, there is a correspondence between the three components of the gaming apparatus of claim 1 and the three components of the gaming apparatus of claim 36. 

    WITNESSES

19. Each of the parties relied on affidavit evidence by several witnesses.  Only some of the witnesses were cross-examined.  I did not form any adverse view of any of the witnesses who were cross-examined.  I consider that each of them endeavoured to respond honestly and without undue prevarication to the questions put by cross-examiners.  The principal witnesses were Mr Peter Hilton Causley, Mr Keiran Daley, Mr Scott Christopher Olive, Mr Serguei Antonov, Mr Moosad Sreedharan, Ms Lynne Cheryl Oldfield and Mr Paul Howard Delfabbro.

20. Mr Daley gave evidence on behalf of Aruze.  Mr Daley has been involved in the gaming industry since 1974.  Between 1974 and 1980, he worked for the New South Wales gaming machine regulator, then known as the Chief Secretary’s Department.  In 1980, he was appointed general manager of Fortune Coin Pty Limited, which was the first company to offer video spinning reel poker machines in New South Wales.  In that position, he organised a marketing plan, trained salesmen and prepared a library of mathematical game models to be submitted for government approval and subsequent sale.  Between 1980 and 1985, Mr Daley was product research manager for Ainsworth Industries, a predecessor of Aristocrat Leisure Industries Limited (Aristocrat).  In that role, he undertook game design for gaming machines. 

21. In 1986, Mr Daley joined IGT (Australia) Pty Limited (IGT) as general manager, group operations.  In that role, he was responsible for game design, which included the development of statistical and mathematical models of games produced and marketed by IGT.  In 1992, he was appointed as managing director of IGT and in 1995 was appointed as executive chairman, a position he held until the end of 1996 when he retired.  As managing director and executive chairman, Mr Daley continued to take an active role in overseeing the design of gaming machine games.  While employed by IGT, Mr Daley followed developments in the gaming machine industry in the United States, through IGT’s United States parent.  Part of his review included United States patents that were filed in relation to gaming machine inventions. 

22. Mr Daley was a founding director of the Australian Gaming Machine Manufacturers Association.  That association is a not-for-profit industry body established in 1990 by the major Australian gaming machine manufacturers.  Mr Daley held the position of chairman of the association in 1995 and remained in that position until the end of 1996.  Each year, the association hosts one of the world’s largest gaming exposition conferences at Darling Harbour in Sydney.

23. After he retired in 1996, Mr Daley continued to keep up with developments in the gaming machine industry.  He continues today to search websites of the United States Patent and Trademark Office and IP Australia for patents relating to gaming machines and systems.  He downloads and reads patents from those offices, having acquired experience in reading patents relating to gaming machines and systems. 

24. Mr Olive also gave evidence on behalf of Aruze.  Between 1997 and 2007, Mr Olive was involved in gaming design at Aristocrat, in which he was actively involved in creation, development, patenting and submission of games for electronic gaming machines.  He was employed in a variety of game designer roles including game designer, mathematician, senior game designer, principal game designer, head of game studio and creative director.  Since 2007, Mr Olive has been a director and principal of True Blue Gaming Pty Limited (True Blue), a wholly owned subsidiary of Aruze America that creates gaming machine content for Aruze America.  He was also an executive director of Aruze Australia.  True Blue has had no involvement in the development, manufacture or supply of Aruze’s games that are alleged to constitute infringement of the Patents.  During the course of his career, Mr Olive has been named as inventor in many patents for games and devices used for electronic gaming machines.  He has also been the designer of many successful electronic gaming machines in Australia. 

25. Mr Olive said that the first step in designing a game is to have a creative idea, such as a mathematical gaming feature or game functionality, or perhaps an idea for a theme.  Once the game designer has the initial idea, the game designer works on the mathematical model of the game.  That involves development of the specific rules of the game, that is, deciding how the game is going to play and function.  Once the rules of the game have been decided, the probability calculations of each winning combination applicable in the game, that is, the win frequency, need to be worked out.  Where gaming machines are operated in a regulated environment, the probability calculations are restricted as each game must provide a specific minimum theoretical return to the player.  The play table is then developed.  That is dependent on the game probability calculations and is also directly influenced by any required theoretical return to the player in a regulated environment.

26. Mr Olive said that in 2003, and even today, the vast majority of games in electronic gaming machines in Australia had a free game feature.  As a game designer, Mr Olive considered that, when playing a game, most players were focused on winning the free game feature.  There are more major prizes than the free game feature, but players know that those major prizes are won rarely and so do not continue to play a machine solely aiming to win them.  Mr Olive said that, while smaller prizes along the way are important to the player and increase game interest, it is the free game feature for which players mainly aim. 

27. In addition, Aruze relied on the evidence of Mr Antonov.  Mr Antonov obtained the degree of Master of Science in computer engineering at the University of Steel and Alloys, Moscow, in 1989.  He is currently a senior software engineer employed by IGT.  He has had 22 years of professional experience in software and hardware design, with 15 years of experience in the gaming industry.  He has assisted IGT in the United States in software architecture design of an advanced video platform that is currently the main gaming machine sold by IGT throughout the world.  His experience also includes design and implementation of various tools for gaming designers, game artists and game software engineers. 

28. Mr Antonov described the hardware elements and software elements, including game software, commonly found in electronic gaming machines in Australia.  He described the processes by which electronic gaming machines in Australia typically execute a game, monitor gameplay and evaluate wins and gameplay generally and the processes by which such machines indicate gameplay status, such as wins, and the status of metered events to the player. 

29. Ms Oldfield gave evidence on behalf of Dynamite on questions concerning validity.  Ms Oldfield is an independent consultant who provides case by case services to participants in the gaming industry.  Up until late 2009, she held various roles in the gaming industry, including as a game designer and IP manager.  Ms Oldfield has a Bachelor of Science from the University of Sydney, majoring in pure mathematics and mathematical statistics in 1975.  From 1977 to 1984, she held various positions with the New South Wales government, including in the poker machine division of the New South Wales Treasury.  In that role, Ms Oldfield reviewed applications by manufacturers for approval of gaming machines and checked the mathematics of games and made recommendations to the Minister regarding the approval of games.  In 1985, Ms Oldfield commenced working as a game designer at Aristocrat.  She was the only qualified mathematician working at Aristocrat in game design at that time.  In 1989, Ms Oldfield became a full-time employee and moved to Aristocrat’s marketing department.  In that role, she was involved in the marketing of all machine products going to markets outside New South Wales clubs.

30. Ms Oldfield joined IGT in 1995 and was the head of game design until 1997.  From 2002 to 2005, Ms Oldfield worked at Ainsworth Game Technology Limited, where she was a game design manager.  The commercial focus there was specialised products for the Russian and Mexican markets and other products sold to Australia, Asia and Europe.  Ms Oldfield was also responsible for the trademarks and patents and reviewing competitor activity in those areas.  From 2005 to 2009, Ms Oldfield returned to work at Aristocrat as research and development games IP manager. 

1. Ms Oldfield explained that what may seem like small variations in game design can be critical factors to the success of a game design.  Creating a new feature or introducing a variation to an existing feature type, which distinguishes one game design from others in the market, is difficult, and it is the aspiration of all game designers to achieve that and for their game design to create the desired following in the market. 

2. Dynamite relied on the evidence of Mr Causley in relation to the question of infringement.  Mr Causley has a Bachelor of Science degree in pure mathematics, organic chemistry and statistics from the University of New England and he has a graduate management qualification from the Australian Graduate School of Management.  Mr Causley has had experience in the gaming industry since 1993 and is very familiar with the operation and development of electronic gaming machines.  From 1994 to 1996, Mr Causley was employed as game designer by Aristocrat.  In that role, his principal duties were to create and design the mathematical content for gambling games in electronic gaming machines.  From 1996 to 1997, he was employed as a games specialist at Aristocrat in the United States.  In that role, his duties were to obtain the acceptance of multi-line electronic gaming machines by United States regulators and testing facilities.  That required him to have a thorough understanding of regulations relevant to the gaming industry. 

3. From 1998 to 2002, Mr Causley was product manager for bonusing games at Aristocrat.  Bonusing games are electronic gaming machines where players play a premium to play a game.  His duties were to oversee the development, launch and global product rollout of a range of electronic gaming machines.  From 2002 to 2004, Mr Causley was employed as the marketing manager of jackpot products for Aristocrat.  His principal duties were related to the marketing and product management of a particular portfolio of electronic gaming machines.  Mr Causley is currently managing director and co-founder of Lightning Box, a third-party content supplier to the gaming industry.  Lightning Box specialises in gaming machine mathematics and the design of low denomination video slot electronic gaming machines.

4. Aruze relied on the evidence of Mr Moosad Sreedharan, who has indicated that he should be referred to as Mr Moosad.  Mr Moosad is the senior vice-president of technical compliance for Australia and Asia Pacific at BMM Compliance, where he has been since 1992.  He is responsible for the testing of gaming equipment, casino systems and jackpot systems.  He is a member of the Australian National Standards working party and the author of a number of technical standards and protocols.  He is licensed by gambling regulators in Victoria, New South Wales and Tasmania.  Aruze also relied on the evidence of Mr Daley in relation to the construction of the claims relevant to the question of infringement. 

   PRIOR ART

5. The prior art relied on by Aruze for lack of novelty consisted of United States Patent Numbers 4,669,731 (Clarke), 5,178,390 (Okada), 5,695,402 (Stupak) and 6,270,409 (Shuster), together with Aristocrat’s Cashcade system, the Mills Futurity Bell slot machine and publications relating to it, the Money Back poker machine of Pacific Poker Machines Pty Limited and the Scatter Rug poker machine of IGT.  I will say something briefly about the prior art relied on by Aruze.  Some of the prior art is relevant to the questions of common general knowledge. 

   Clarke

6. The date of Clarke is 2 June 1987.  The inventor named is George Clarke of Hornsby, Australia.  Clarke states that a principal object of the claimed invention is to provide a slot machine that is adapted to pay out coins when consecutive lost games take place.  Another object is said to be the provision of a slot machine in which the number of consecutive lost games taking place is shown to the player.  A further object is said to be the provision of a slot machine that is adapted to pay out as many coins as the number of coins spent for consecutive lost games and the provision of a slot machine in which the number of coins spent for consecutive lost games is shown to the player. 

7. Clarke states that a slot machine in accordance with the claimed invention comprises a game counter for counting up lost games in which there is no occurrence of a prize-winning combination of symbols, means for resetting the game counter to its initial value, usually zero, when there is a prize-winning combination of symbols in any game, means for paying out coins of the number corresponding to prize-winning combinations of symbols that have occurred in a game, and means for actuating the coin payout means when a predetermined number of consecutive lost games take place, so as to pay back coins spent for the lost games. 

8. The distinctive feature of the claimed invention is said to lie in the fact that the game counter includes an indicator for visibly showing the counted value to the player.  Thus, in the event of consecutive lost games, the player can play games with a special interest, even though there is no occurrence of a prize-winning combination of symbols in a game.  In addition, when a predetermined number of consecutive lost games take place, the player can “get the feeling of satisfaction of getting a special prize”, which is different in kind from that of winning games. 

9. While the player is consecutively losing games, the number of coins spent for each lost game is added to the total number of coins spent for previous consecutive lost games.  The resulting total number of coins is indicated in the coin indicator, as well as the number of consecutive lost games in the game indicator at the end of every lost game.  In the event that a predetermined number of lost games consecutively take place, the slot machine pays out as many coins as the number corresponding to the number indicated in the coin indicator.  However, at any time when the player gets a win in a game before the predetermined number of consecutive lost games, the coin and game indicators are reset to zero at once.

10. When the predetermined number of consecutive games has been lost, the whole number of coins having been spent from the lost games is paid out.  Such a special coin payout can be considered either as the compensation to the player who is consecutively losing games or as itself a type of win.  Clarke states that, in view of that consideration, it may be attractive to pay out a part of or more than the whole number of coins spent for the predetermined number of consecutive lost games.

    Okada

11. Okada states that the object of the claimed invention is to provide a game machine that can hold the player’s interest in the game even when the bet value has totalled a large sum.  To achieve that and other objects, the invention provides a game machine, especially a slot machine, wherein a value is bet on a game and a prize is awarded for a hit obtained.  In addition, an insurance premium value is set, in addition to the value to be bet on each game, so as to generate an insurance signal for effecting an insurance period.  While the insurance signal is maintained, the values that have been bet on games are accumulated.  When the accumulated value reaches a predetermined amount, a predetermined value of insurance is paid out and, at the same time, the insurance signal is terminated.  The insurance signal may be terminated if a big hit occurs.

12. By indicating that the insurance signal is maintained, and by displaying the values that have been bet during the insurance period, the player can expect the payment of insurance when playing games, in addition to the winning of prizes.  In the case of a slot machine, wherein the value to be bet on each game is predetermined at a constant amount, it is possible to count the number of games that are played during the insurance period, so as to pay out an insured amount when the number of games reaches a predetermined number.  Under the invention, even if the player loses many games, and thus obtains a lesser prize, the player may be compensated for a part of that loss by receiving the insurance.  Therefore, Okada claims, an unskilled player can enjoy the games without anxiety about losing a large amount of money.

13. Claim 1 of Okada is for a game machine comprising means to bet on a game before starting a game, and means to award a first predetermined value as a prize for a hit game, the game machine comprising:

    ·a first signal generator for generating a first signal based on a premium that is in addition to the bet on each game;

    ·means for selectively setting that premium at the option of the player;

    ·means for accumulating bets on games in response to the first signal;

    ·a second signal generator for generating a second signal when the value accumulated in the accumulating means reaches a second predetermined value;

    ·means for awarding to the player a third predetermined value as insurance in response to the second signal; and

    ·means for clearing and inactivating the accumulating means in response to the second signal.

14. When the insurance stake is made, the machine functions include the following operations:

    ·a game counter is activated, which accumulates the number of games played and a climax count is set at a predetermined number;

    ·a guarantee event is triggered when the predetermined count is reached;

    ·the count is based on the value of coins bet;

    ·the count is reset whenever the climax count is reached and the guaranteed event occurs or a predetermined hit category event occurs; and

    ·an indicator light is activated, which displays the count in an LED display.

    Stupak

15. Stupak refers to the existence of a need for a game in which players are rewarded for both winning and losing play.  The claimed invention provides for a gaming machine and a method of gameplay.  The gaming machine preferably comprises a slot or video-poker machine, which includes an indicator for indicating the number of successive losing game results, and which pays a player a very large, or preferably maximum jackpot amount when a predetermined number of successive games are losing games.

16. The method of play disclosed in Stupak is for a player to place a bet and activate the machine.  If the result of the game is a predetermined winning combination, the player receives a winning payout.  If the result of the game is a predetermined losing combination, the indicator indicates a loss, or increments the number of successive losses shown if the loss is a successive loss.  If the result of a game is the last loss of a predetermined number of successive losses, such as ten, the player is paid a large jackpot amount by the machine.  The central processing unit monitors game functions, such as bets made, play outcomes and prize payments.  When a losing play outcome occurs, an indicator light is lit.  If successive losing game outcomes occur, an additional light is illuminated.  All lights are turned off immediately following a win outcome.  The loss outcome indicator may be implemented as a row of lights or as a numeric gauge, as illustrated in a figure in the specification.

    Shuster

17. Shuster states that the claimed invention is directed to a gaming method and apparatus wherein the participants are guaranteed to win a minimum amount after a fixed period of time or a predetermined number of games.  Preferred embodiments of the invention include the steps of determining the parameters for the minimum win and controlling the gaming device.  The step of determining the parameters for the minimum win includes the steps of determining the win interval and the minimum guaranteed award amount for achieving the win interval.  The win interval is said to be the amount of plays or the amount of accumulative wager that must be placed prior to a guaranteed award being paid.  In instances where the number of games in the win interval are played, and the player fails to win, the guaranteed award will be paid.

18. Shuster states that, once the win interval and the amounts for winning are determined, the gaming apparatus is configured.  Thus, for example, if the gaming apparatus is a slot machine, the slot machine is pre-programmed with the win interval and the payout schedule.  Accordingly, during play, the slot machine will recognise when a pay condition is achieved.  One feature of embodiments of the claimed invention is the guarantee to win a minimum amount after a predetermined number of games.  Another feature of preferred embodiments of the claimed invention is that the predetermined number of games or amount of time that must elapse prior to winning is displayed.  An advantage of that feature is said to be that players are informed in advance of the amount of play that must occur prior to the opportunity to win.

19. Shuster states that preferred embodiments of the invention are directed to a method and apparatus for gaming, wherein the participant is guaranteed to win a minimum amount after the establishment of the win interval, such as, for example, a predetermined number of games or a predetermined accumulated wager.  One of the drawings that form part of Shuster is an illustrative schematic of a preferred embodiment of a gaming method played on a slot machine, wherein the slot machine includes a counter.  The player initiates a game by inserting a required minimum number of tokens into the slot machine and actuating a lever or pressing a button or any other suitable means for initiating play.  At the beginning of play, the counter is set at zero.  When a payout is made to the player, the counter remains at zero and the slot machine is ready for continued play.  If the reels do not produce a winning combination at the cessation of the spin, the counter in the slot machine is incremented by one. 

20. The player then has the option of continuing to play or terminating play.  If the player terminates the play, the counter remains at one and the player receives no further payment.  As the counter remains at one, the win interval has commenced and a new player can continue to play that win interval.  The play continues until the counter reaches a preset number or the player spins a winning combination.  If the counter reaches the preset number, which represents a fixed number of successive games, the slot machine notifies the player that the win interval has been achieved and that the next actuation of the lever will result in a forced win.  More specifically, the next activation of the lever will initiate the continuous re-spinning of the reels until a winning combination results.

21. Shuster contains a table of a preferred embodiment of a particular combination of wins, the odds of those combinations being achieved and the award amount for each particular win.  The table is only one example of a determination of the award schedule.  The award schedule is determined by the owner or operator of the machine.  The choice of the first guaranteed award amount is determined, in part, on the odds of winning.  The first guaranteed award amount is pre-set to allow the machine owner or operator the ability to maintain a desired level of odds for winning.

22. Shuster states that, in one preferred embodiment, a counter, coupled to a controller, such as a computer, is placed within the slot machine, wherein the controller sends a signal to the counter indicating whether the minimum wager has been placed.  The counter increments each time the minimum required number of coins or tokens are played and the player’s spin does not result in a winning combination of symbols.  In another preferred embodiment, the slot machine automatically spins once to produce a winning combination, which is randomly chosen, such as, for example, by a random generator that only contains winning combinations.  After the forced win is achieved, the counter resets to zero. 

23. Shuster states subsequently that, once the game parameters are determined, the slot machine, or series of slot machines, are equipped with counters, or other means for tracking the win interval, and a next play indicator for advancing play to the next play level.  Typically, the win interval, the win awards for a given combination and odds of winning particular combination for each play level are posted on the outside of the machine for the players.

24. Claim 10 of Shuster is for a gaming machine as described comprising, amongst other things, means for defining a win interval, wherein the win interval includes the number of games to be played by the gaming participant and a minimum amount of credits to be inserted per game, a counter, and means for automatically initiating repeated spins of the reels without intervention by the player after the win interval has been achieved, wherein the repeated spins of the reels are continued until a combination belonging to the set of combinations of winning symbols appears on one of the repeated spins. 

25. Claim 12 of Shuster is for a gaming machine as claimed in claim 10, wherein the counter is configured to determine the win interval, wherein the win interval is set at a predetermined value that is calculated by the summation of the total number of wins and losses of a plurality of games played, wherein the number of wins is no greater than a predetermined value. 

26. Claim 13 of Shuster is for a gaming device for providing a gaming participant with games of chance for wagered stakes, the gaming device having a counter configured to count each game played, wherein the gaming device has a set of winning combinations and a corresponding set of award amounts containing at least one award amount for each winning combination, and wherein the gaming device is configured to perform the steps of:

    ·setting the counter to zero;

    ·selecting a win interval, wherein the win interval comprises a number of games to be played by the gaming participant and a minimum amount of wager per game;

    ·incrementing the counter upon the playing of a game in which the player has wagered the minimum amount of wager and no winning combination is achieved;

    ·notifying the player when the counter has incremented to the win interval; and

    ·providing the player with the option of advancing to a subsequent play level or receiving at least the minimum award amount.

    Futurity Bell

27. Games that monitor the outcome of multiple plays in order to determine the operation of a bonus feature are known as metamorphic games.  The Futurity Bell slot machine was a very early metamorphic game from 1936.  The metamorphic feature of the game was that it monitored losing games and displayed the cumulative total of losing games on a counter on the upper part of the cabinet.  If a player played ten consecutive losing games, the machine would pay to the player a prize equal to the whole of the money staked during the ten consecutive losing games and the counter was reset.  When the sequence of losing plays started, a pointer at the top of the machine moved by one and pointed to the numeral one on a special dial.  If a losing game immediately followed, the pointer would move from 1 to 2.  If a prize-winning game occurred, the machine reset the sequence count back to zero and the pointer moved correspondingly.

    Money Back

28. Money Back was probably the first metamorphic gaming machine game in Australia.  It was marketed as a microprocessor-controlled machine.  The game could be played with one to five coins wagered per play.  Game outcomes were determined by reference to one designated play line.  Money Back required that the machine’s microprocessor would monitor the state of the series of games played by the player and the amount wagered over that series.  During the operation of the sequence, the machine separately displayed the current length of the sequence and the current value of the sequence.

29. Money Back had a feature constituted as follows:

    ·If a play outcome did not involve a prize being awarded, a first visible count meter was increased by one to show the number of games played since the last win.  At the same time, a second visible meter was increased by the number of coins played since the last win.

    ·In the event of a win, both visible meters were reset to zero.

    ·If the first visible count meter reached 13, indicating thirteen games in unbroken sequence, the number of coins shown in the second visible meter would be paid to the player.  Both meters were then reset to zero at the start of the next play.

    The first visible meter indicated to the player how many games remained before the trigger of the Money Back feature.  Money Back was based on the invention of Clarke.  For example, Clarke gives the number thirteen as an example of a predetermined number of losing plays that would result in a payout. 

1. The poker machine specification and approval of the Money Back game in the New South Wales regulatory authority records the Money Back feature as follows:

   If 13 consecutive non-paying combinations occur, the total amount invested by the player for those 13 plays is paid back to the player by being added to the credit meter.  Less than 13 consecutive non-paying combinations do not entitle the player to the “Money Back” feature.  The number of plays since the last payout is shown on a 2 digit LED counter indentified [sic] as “Games played since last win”, and on a row of numbers on the upper panel.  The cumulative amount of credits played since the last payout is similarly shown on another 2 digit LED counter identified as “Coins played since last win”.

   Cashcade

2. Progressive jackpots were a significant development in the gaming machine industry in New South Wales in the mid to late 1980s.  The first development was the invention by Mr Boris Frankovic, for which Australian Patent 589158 was granted.  The Cashcade system introduced by Aristocrat was an application of the invention of that patent.

3. Cashcade operated as follows:

   ·The Cashcade controller was set with minimum and maximum money values.

   ·The controller randomly selected a money value between the minimum and maximum values that would trigger the payment of the bonus jackpot selected value , which was not displayed.

   ·Each time a machine that was linked to the Cashcade controller was played, it sent a proportion of the amount of the value played to the controller.  That amount was then added to an incrementing value for comparison with the amount selected between the minimum and maximum.

   ·The Cashcade bonus jackpot sign displayed the incremental total of the contributions by machines linked to the Cashcade system.

   ·The incremental total bonus jackpot was displayed on the overhead Cashcade bonus jackpot sign.

   ·When the incremental total bonus reached the selected value, the machine that contributed the increment that took the incremental total bonus to the selected value was awarded the bonus jackpot.

4. The distinguishing feature of Cashcade was that the bonus jackpot was guaranteed to be won when the accumulated money value achieved a randomly chosen value between the fixed minimum and maximum.  The players could see the accumulated total increase each time a linked machine was played.  The Cashcade system was “deterministic” in that, as play occurred and the incrementing value of the proportion sent to the controller approached the win value, a win was guaranteed to occur when the two values were equal.  That is to say, a win was determined to occur within a set range of units wagered. 

   Scatter Rug

5. Mr Daley designed Scatter Rug when he worked for IGT.  The game was marketed in 1987 as a microprocessor-controlled game with five spinning reels and the facility of being played on one to five different play lines. 

6. Play line refers to a line of symbols in a reel game on which a player can bet.  The line might be a line of symbols appearing horizontally across a row of all the reels.  It might be a diagonal line across each of the reels.  It might be in some combination across the reels using one symbol from each of the reels.  A reel is a series of symbols forming part of an ordered loop, as visible on the electronic display of a gaming machine. 

7. Spinning reel games display play outcomes in a visible picture.  Within that visible picture pay lines, pay patterns of symbols and “scatter” are evaluated by the game process.  On a five reel three line display, several pay lines can be predefined as shown in the following figure:

   In the above illustration, five linear pay lines are defined.  If a player chooses to play all five lines, any win combination of symbols on any of the pay lines will qualify for a win.  On the other hand, if a player chooses to play on only one line, a win combination of symbols on the other lines will not win. 

8. In Scatter Rug, gameplay outcomes were determined by use of a random number generator embedded in the controlling software.  The game included a series feature that could build to a climax point when certain gameplay events occurred in any one gameplay.  The series was continuously available.  The gameplay events included:

   ·           any two Scatter Rug symbols;

   ·           any three Scatter Rug symbols;

   ·           any four Scatter Rug symbols; or

   ·           five Scatter Rug symbols.

   When any of the set of outcomes occurred, a counter counted it.  If four such events occurred in succession, an award was paid equal to the amount staked in the completed series.  If any one of the set of outcomes failed to occur in a gameplay, the series accumulation was reset to zero.

9. The cumulative counter operated in two parts as follows:

   ·the accumulated amount of the amount bet on each successful event outcome and the number of sequential eligible outcomes were displayed after each gameplay on a display visible to a player; and

   ·when any two or more Scatter Rug symbols did not appear anywhere in the window, the two accumulations were cancelled and the indicators reset to zero.

10. The game could be played on one, two, three, four or five different lines, according to the player’s preference.  Each line required an additional coin to be staked. 

11. Scatter Rug was approved by the New South Wales regulatory authority on 28 July 1987 for use in New South Wales.  The game specification issued by the regulatory authority, in setting out the rules of the game, stated that it is a multi-line game with the following features:

    ·in the event of any two or more Scatter Rug symbols appearing scattered anywhere in the window, one of four sequence lights will be illuminated;

    ·if all four sequence lights are illuminated in four games in a row, the total money staked for those four games will be paid to the player;

    ·when any two or more Scatter Rug symbols do not occur, all lights in the series are turned off;

    ·after payment on account of all four lights being illuminated, the lights remain on until the beginning of the next play, when all are turned off; and

    ·the series is continuously available. 

    VALIDITY OF THE PATENTS

12. Section 18(1) of the Act relevantly provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

    (a)is a manner of manufacture; 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.

13. Under s 18(1A), 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; 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. 

14. Section 7 provides, relevantly, that an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of certain kinds of prior art information. Under s 7(2), an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim. Under s 7(3), the information for the purposes of s 7(2) is any single piece of prior art information or combination of any 2 or more pieces thereof, being information that a person skilled in the relevant art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant. Under s 7(4), an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the prior art information in ways that make no substantial contribution to the working of the invention.

15. Under s 40, a complete specification must describe the invention fully, including the best method known to the applicant of performing the invention and must end with a claim or claims defining the invention. The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

16. As indicated above, there are several grounds upon which it is contended that the claimed invention does not satisfy the requirements just summarised. It is desirable to deal with each separately.  In light of the conclusion I have reached in relation to the lack of inventive or innovative step, it is not strictly necessary to consider other grounds of invalidity.  However, I propose to say something about the questions raised in relation to manner of manufacture and lack of novelty. 

    Inventive Step/Innovative Step

17. For there to be an inventive step, there must be some difficulty overcome or some barrier crossed.  The question is whether the claimed invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that field, without regard to documents in existence but not part of common general knowledge  (Lockwood Security Products Pty Limited v Doric Products Pty Limited (2007) 235 CLR 173 at [51]-[56]) (Lockwood). 

18. In determining whether a claimed invention involves an innovative step, the Court must consider and, where necessary, identify the invention, so far as claimed in any claim, the person skilled in the relevant art and the common general knowledge as it existed in Australia before the priority date.  The Court must then ask whether the claimed invention only varied from the kinds of information referred to in s 7(5) in ways that make no substantial contribution to the working of the invention.  The person skilled in the art must identify and assess the variations between the invention as claimed in each claim and the prior art and determine whether or not those variations make a substantial contribution to the working of the invention as claimed in each claim.  Substantial contribution in the context of s 7(4) means real or of substance.  Section 7(4) contemplates that, in performing that task, a person skilled in the art has certain background knowledge that that person uses in identifying and assessing such variations (Dura-Post (Aust) Pty Limited v Delnorth Pty Limited (2009) 177 FCR 239 at [54], [74]).

19. In order to establish lack of inventive step, it is necessary to identify properly and to prove precisely what is said to constitute the common general knowledge.  The impugned invention must be compared with the prior art base to determine whether there is an inventive step.  There is no onus on a patentee to prove an inventive step.  Dynamite contends that Aruze has failed to identify the step that is said to lack inventiveness.  It complains that there is no reasoned comparison between the claimed invention and the common general knowledge to determine whether the claimed invention would have been obvious, in the light of common general knowledge, to a person skilled in the art.

20. Dynamite accepts that obviousness may be established by combining the common general knowledge with information of the kind referred to in s 7(3) of the Act. It says, however, that information of the kind referred to in s 7(3) is not information that forms part of the common general knowledge. Dynamite contends that establishing obviousness by means of s 7(3) imposes a high evidentiary onus on a party impugning a standard patent on that ground. It is necessary to establish, by appropriate evidence, not only the common general knowledge, but also that a person skilled in the relevant art could reasonably be expected to have ascertained, understood, and regarded as relevant, the information referred to in s 7(3) and to have combined that information with the common general knowledge in order to achieve the invention.

21. Dynamite asserts that Aruze led no evidence in relation to those matters. More particularly, it says that Aruze has not adduced evidence to prove that the documents relied on by Aruze constituted information referred to in s 7(3). It says that there is no evidence to support a conclusion that any particular patent would have been ascertained, understood and regarded as relevant by the relevant skilled addressee.

22. Dynamite also advances the proposition that patents are extremely numerous in the gaming industry, as exemplified by the large number of patents applied for by Aristocrat before the priority date.  In that regard, Dynamite suggests that seemingly small differences between competing games may be important and that small differences between a claimed invention and the information against which inventiveness is assessed are, in the circumstances, sufficient for inventive step. 

23. In considering inventive step, all that is required to maintain validity is that there be no more than a scintilla of invention (Lockwood at [52]). The question of whether an invention is obvious is a matter of fact. The evidentiary burden of establishing obviousness is to be borne by the party impugning the validity of the patent. The essential point is whether the evidence, as a whole, supports the inventiveness of what is claimed (Lockwood at [51]).

24. Dynamite contends that the question is whether the person skilled in the art, in all of the circumstances, which include a knowledge of all relevant prior art, would be led directly, as a matter of course, in designing a gaming apparatus, to try an event guarantee component as described in Claim 1 (Aktiebolaget Hassle v Alphapharm Pty Limited (2002) 212 CLR 411). Such a formulation, however, is somewhat inapt in the case of the design of a gaming machine. That question may be appropriate where a chemical compound is being sought that might have a particular effect. The question in the present case is better formulated as whether the event guarantee component described in the Specification and Claim 1 was obvious to try in order to produce an enhancement of gameplay interest.

    Common General Knowledge

25. Common general knowledge is the background knowledge and experience that is available to all those in the relevant field who are considering the making of new products or the making of improvements in old products (Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292). Common general knowledge is the technical background of the skilled worker in the relevant art or area (ICI Chemicals and Polymers Limited v Lubrizol Corp Inc (1999) 45 IPR 577 at [112]).

26. It is necessary to establish common general knowledge by appropriate evidence.  Evidence that consists of generalised and sweeping statements of opinion or recollection, unsupported by secondary materials such as text books, trade journals and technical publications, should be treated with caution and given little weight.  Dynamite contends that Aruze’s evidence of common general knowledge is inadequate.  However, Dynamite accepts that certain matters in evidence were common general knowledge at the relevant priority date. 

27. The operation of gaming machines requires various events occurring in relation to the game being played to be monitored.  Electronic gaming machines controlled by microprocessors, which emerged in the late 1970s, are particularly adapted to monitoring a range of events, such as the number of lines played, the amount bet per line, the play outcome, the player’s credit level and the like.  Electronic gaming machines consisted of:

    ·hardware, such as a central processing unit, random access memory (RAM), non-volatile memory, a video controller, a cathode ray tube or liquid crystal display, cash handling devices, speakers and a button panel; and

    ·software, including an operating system, secure random number generator and the game itself, which consists of various components.

    Each game component reports its state to the operating system and the operating system monitors and registered all game events, such as credits bet, game outcomes, credits won, and free games triggered or won.  Once the features of a game have been chosen by a game designer, the embodiment of that game in a gaming apparatus having the necessary hardware and software required is effectively a well-known mechanical and electronic exercise.

28. As at the priority date, all game designers aspired to achieve new features or variations that distinguished one game design from others in the market.  The job of a game designer was to invent games that would be more attractive to players than the games of other manufacturers.  It was well known, in that context, for games to offer bonus features.  As at the priority date, in October 2003, the vast majority of gaming machines had one or more bonus features.  Some of those had been in use for a long time. 

29. As indicated above, Money Back was operated in Australia from the mid 1980s.  In the event of a thirteen play losing sequence, Money Back guaranteed to the player the amount wagered over those thirteen plays.  Progress towards the target was indicated in a display on the machine, as was the amount bet during the losing sequence.  Those displays were reset to zero, and the sequence terminated, if the player received a win.  Money Back was featured on daytime television and a lot of Money Back machines were sold.  Money Back formed part of the common general knowledge. 

30. The Cashcade system was marketed in Australia by Aristocrat in the late 1980s and was part of common general knowledge at the priority date.  The Cashcade controller was set with minimum and maximum money values, which were displayed to the player.  The controller then randomly determined a value within the range.  Each time a machine linked to the controller was played it sent a proportion of the value played to the controller.  The Cashcade bonus jackpot sign displayed the incremental total and, when it reached the randomly selected figure, the jackpot was awarded to the player who had contributed the increment to reach the winning amount. 

31. Game designers in Australia at the priority date were aware of the applicable gaming machine standards applied by the relevant regulator.  The Australian/New Zealand Gaming Machine National Standard (the Standard) was applied in Australia as at the priority date.  The contents of the Standard were background knowledge available to all in the trade in considering the making of new games, or the making of improvements to old games.  The Standard addressed matters such as the events to be monitored by the machine, games triggering a free game feature and any subsequent free games and second-screen bonus features and the requirements for metamorphic games. 

32. According to the Standard, metamorphic games must display to the player sufficient information to indicate the current status towards the triggering of the next metamorphosis of the game.  For example, if the game collects tokens towards a feature, the number of tokens missing or the total number required to trigger the metamorphosis must be indicated, along with the number of totals collected at that point.  In the case of token accumulation games, the artwork on the machine must clearly show a description of how many tokens are required to trigger the feature and an indication of how many tokens are currently accumulated.  Those requirements meant that the player must be informed how much token accumulating game play remained before the guaranteed feature was triggered. 

33. The Standard also addresses a broad range of features commonly in use in Australia, including token accumulations, free games, re-spins, held reels, bonus prizes and metamorphic sequences.  A bonus prize is, according to the Standard, a feature where additional amounts may be won and possibly multiplied.  The Standard defines a game as a set of rules that a gaming machine follows.  Game characteristics such as the conditions for triggering guaranteed events and the display of progress towards that trigger are rules of the game and concepts expressly contemplated in the Standard. 

20	The apparatus of any preceding claim, wherein play parameters for the guaranteed event are determined from play parameters existing during normal play. [Note that by reference to p10 lines 10-15 and 31-34 of the specification (P2511), an example of a “play parameter” of a “win event” is the amount of the award for the particular winning combination constituting the win event. An example of a play parameter for a “feature event” is also the rate of pay of an award during a feature event.]	Yes	Stupak The jackpot is a multiple of the amount bet: col 3:49-54 Shuster The guaranteed event is a “feature event” consisting of a free spin pursuant to which a winning combination being a winning combination for the purposes of normal play, is guaranteed. The “first guaranteed award amount” is the amount to be paid for the guaranteed winning combination on the free spin. The first guaranteed amount is determined by reference to play parameters of normal play, namely the amount of the award for the winning combination in normal play: “The determination of the first guaranteed award amount is based, in part, on the award schedule for the winning amount.” col 5:48-67 col 6:19-28 col 6:47-col  7:5 Money Back The size of the guaranteed event depended upon the amount bet during the losing sequence. Ex KD1, para 133	The documents do not anticipate claims 1, 6 and 9, so when this claim is dependent upon 1, 6 or 9 it is not anticipated. Stupak Stupak does not disclose claim 1 and therefore does not disclose claim 20. When claim 20 depends from claim 6, Stupak additionally lacks a “feature event”. Shuster Shuster does not disclose claim 1 and therefore does not disclose claim 20. Money Back Money Back does not disclose claim 1 and therefore does not disclose claim 20. When claim 20 depends from claim 6, Money Back additionally lacks a “feature event”.
21	The apparatus of any preceding claim, wherein play parameters for the guaranteed event are determined from an average of play parameters existing during normal play. [Note that “play parameters existing during normal play” comprehend the existing listing of payouts for winning combinations in normal play. Thus a payout in connection with the guaranteed event which is determined from an average of listed payouts for winning combinations during normal play is captured by this claim.]	Yes	Shuster The guaranteed event is a free spin which guarantees the payment of a first guaranteed award amount. “…the award for each winning combination is based on the odds of achieving a particular winning combination.” col 5:54-55 Table 1 showing odds of winning combination AAA for three coins played of 16.67% with an award amount paid of 3 coins. Col 6:1-8 “The choice of the first guaranteed award amount is further determined, in part, on the odds of winning Indeed, the first guaranteed award amount is preset to allow the machine owner, gaming director, or operator the ability to maintain a desired level of odds for winning. In preferred embodiments, the first guaranteed award amount is set higher than the minimum amount paid by the award schedule. Thus, for example, if the winning combination having the highest odds pays three coins, the first guaranteed award amount is minimally set at three coins.” col 6:23-28 That is to say, the minimum three coins is determined by reference to the odds of winning the AAA combination which itself represents the average of returns to a player based on normal play of the machine over time. Money Back Because the size of the guaranteed event depended upon the amount bet during the losing sequence, the higher the average amount bet the higher the payout on the triggering of the guaranteed event. Ex KD1, para 133	Shuster Shuster does not disclose claim 1 and therefore does not disclose claim 21. Further, the Applicant relies upon the matters raised in the course of oral closing submissions (T 380/28-46) which is responsive to the Respondents Table of Claims Standard Patent 20044281073. Play parameters for the guaranteed event are not determined from an average of play parameters existing during normal play. The award for a winning combination is based upon the odds of achieving the combination. The odds, as exemplified in Table 1, are predetermined odds. Money Back Money Back does not disclose claim 1. KD1, para 133 does not disclose that Money Back performs any averaging.  Rather, the number of coins paid out after 13 losses is simply the addition of the number of coins inserted during the 13 losing games. Also, Money Back does not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
22	The apparatus of any one of claims 1 to 19, wherein play parameters for the guaranteed event are determined randomly. [This claim simply specifies that the play parameters be determined randomly. All of he prior art determines play parameters for the guaranteed event randomly in the sense that it is a matter of design choice for the game supplier not dictated by any particular formula, subject to ensuring an adequate pay return]	No	See claim 1 Eg Shuster	Since claim 1 is not anticipated, claim 22 is not anticipated by any of the prior art relied upon by the Respondents. Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
23	The apparatus of any preceding claim, wherein the guarantee gameplay amount that must be played before the guaranteed event is triggered is determined randomly.	Yes	Shuster claim 12: col 13:3-8. Because the total number of wins and losses of a plurality of games will be randomly occurring numbers, a calculation based on these will be random. Cashcade	Shuster Shuster does not disclose claim 1 and therefore does not disclose claim 23. Claim 12 of Shuster discloses setting the win interval to a predetermined value, which is based on a summation of the results of a plurality of games, subject to a minimum number of wins.  This is not a random determination of the guarantee gameplay amount. Cashcade Cashcade does not disclose claim 1 and therefore does not disclose claim 23. In Cashcade, if the “guarantee gameplay amount” is construed as the amount of gameplay between the start of the range and the mystery value, then the Cashcade indicator does not provide an indication of the “amount of gameplay remaining” because it does not identify the ‘mystery value’. Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
24	The apparatus of any preceding claim, wherein the guarantee gameplay amount that must be played before the guaranteed event is triggered is set to a predetermined value.	No	Okada col 2:20 col 3:12-16 col 5:47-56 Stupak Predetermined number of successive games are losing games col 1:61-2. Shuster Fixed period of time or predetermined number of games col 2:17-20 col 2:42-44 Money Back Gameplay amount fixed as a 13 game losing sequence. The size of the guaranteed event depended upon the amount bet during the losing sequence. Ex KD1, para 133 Futurity Bell Gameplay amount fixed as a 10 game losing sequence. Ex KD1 para 122(a) Scatter Rug The guaranteed gameplay amount was set at four games in which scattered rug combinations were achieved. Ex KD1 para 141-142.	Since claim 1 is not anticipated, claim 24 is not anticipated by any of the prior art relied upon by the Respondents. Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
25	The apparatus of any preceding claim, wherein two or more game events are separately guaranteed, and wherein the indicator means provides two or more indicators, one for each guaranteed event.	No
26	The apparatus of any preceding claim, wherein the game run by the gaming apparatus is from the group of a slot-machine game, poker, keno, bingo, blackjack, roulette, or pachinko.	Yes	Clarke col 1:55-56 Okada col 1:7 col 2:12-13 Stupak col 1:58 Shuster Slot machine col 3:42 Money Back Money Back was slot machine (reel strip) game - see Ex KD1 attachment 9 CB p 879 Futurity Bell Slot machine Ex KD1 para 122	Clarke The Applicant accepts that Clarke discloses the additional integer of claim 26 (but not that it is anticipated when dependent on any of the other preceding claims). Okada The Applicant accepts that Okada discloses the additional integer of claim 26 (but not that it is anticipated when dependent on any of the other preceding claims). Stupak The Applicant accepts that Stupak discloses the additional integer of claim 26 (but not that it is anticipated when dependent on any of the other preceding claims). Shuster The Applicant accepts that Shuster discloses the additional integer of claim 26 (but not that it is anticipated when dependent on any of the other preceding claims). Money Back See comments for Clarke above. Futurity Bell The Applicant accepts that Futurity Bell discloses the additional integer of claim 26 (but not that it is anticipated when dependent on any of the other preceding claims). Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
27	The apparatus of any preceding claim, wherein the apparatus is an electronic gaming machine.	Yes	Clarke col 3:14-16 Okada col 6:24-26 Stupak CPU col 3:5 Shuster Controller is a computer col 9:14-15 Money Back A microprocessor controlled machine Ex KD1, para 130	Clarke The Applicant accepts that Clarke discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Okada The Applicant accepts that Okada discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Stupak The Applicant accepts that Stupak discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Shuster The Applicant accepts that Shuster discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Money Back See comments for Clarke above. Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
28	The apparatus of any preceding claim, wherein the apparatus includes a central control and a plurality of remote devices in communication with the central control.	No	Shuster Participating slot machines are connected col 10:19-24. Cashcade	Shuster While one preferred embodiment of Cashcade discloses that the participating gaming machines are connected to a simple, progressive jackpot, it does not disclose that there is a central control. Cashcade Cashcade does not disclose an apparatus with a central control. Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
29	The apparatus of any preceding claim, wherein the apparatus includes a network of electronic devices.	No	Shuster Participating slot machines are connected col 10:19-24. Cashcade Ex KD1 para 68	Shuster The Applicant accepts that Shuster discloses the additional integer of claim 29 (but not that it is anticipated when dependent on any of the other preceding claims). Cashcade The Applicant accepts that Cashcade discloses the additional integer of claim 29 (but not that it is anticipated when dependent on any of the other preceding claims). Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
30	The apparatus of claim 28 or 29, wherein the guarantee gameplay amount is based on combined gameplay for a plurality of said devices	No	Cashcade Ex KD1 para 68 Shuster col 10:19-32	Cashcade Cashcade does not anticipate claim 28 and it does not disclose guaranteed gameplay amount within the meaning of the claims Shuster Shuster does not anticipate claim 28 and it does not anticipate that the guarantee gameplay amount is based on combined gameplay of a plurality of devices. Rather, it is the jackpot in Shuster that increases as all the players place wagers. Also, the documents do not anticipate claims 6 and 9, so when this claim is dependent upon 6 and 9 it is not anticipated.
31	A gaming system including: a component for monitoring gameplay; a component for monitoring the occurrence of a game event; an event guarantee component for triggering a guaranteed game event if the monitored game event has not triggered within a set amount of gameplay; and a guarantee indicator component for providing a guarantee indicator that indicates the amount of gameplay that must occur before the guaranteed event is triggered.	No	See claim 1	Since claim 1 is not anticipated, claim 31 is not anticipated by any of the prior art relied upon by the Respondents.
32	The system of claim 31, wherein the system includes a central control for running a gaming algorithm, and a plurality of remote clients in communication with the central control over a communications network, the remote clients including screens for displaying gaming screens and inputs for allowing player interaction with the central control, guarantee indicators being provided on the client screens.	No	Shuster Participating slot machines are connected col 10:19-24. Cashcade Ex KD1, para 68	Shuster While one preferred embodiment of Cashcade discloses that the participating gaming machines are connected to a simple, progressive jackpot, it does not disclose that there is a central control. Cashcade Cashcade does not disclose an apparatus with a central control.
33	A method of operating gaming apparatus, the method including the steps of: monitoring gameplay; monitoring the occurrence of a game event; triggering a guaranteed event if the monitored event does not occur within a set amount of gameplay; and indicating the amount of guarantee gameplay remaining before a guaranteed event is triggered.	No	See claim 1	Since claim 1 is not anticipated, claim 33 is not anticipated by any of the prior art relied upon by the Respondents.
34	Gaming software including: a component for monitoring gameplay; a component for monitoring the occurrence of a game event; and an event guarantee component for guaranteeing that a game event will trigger within a set amount of gameplay, the event guarantee component including: a trigger component for triggering a game event when the set guarantee gameplay amount is reached without the monitored event having been triggered, and an indicator component for indicating the amount of gameplay remaining to be played before a guaranteed game event will trigger.	No	See claim 1 except Futurity Bell.	Since claim 1 is not anticipated, claim 34 is not anticipated by any of the prior art relied upon by the Respondents.
35	A gaming software product, including a recording media on which the software of claim 34 is recorded.	No	See claim 34	Since claim 1 is not anticipated, claim 35 is not anticipated by any of the prior art relied upon by the Respondents.
36	Gaming apparatus including: a gameplay monitor for monitoring user interactions with the apparatus; an event monitor for monitoring the occurrence of a game event; and a guarantee feature for triggering a gaming event if the monitored event has not occurred within a set amount of gameplay and for indicating to a user the amount of gameplay remaining before the guarantee feature is triggered.	No	See claim 1	Since claim 1 is not anticipated, claim 36 is not anticipated by any of the prior art relied upon by the Respondents.
37	An electronic game in which a bet is placed, game events occur and wins are returned, and gameplay and game events are monitored, and including a guarantee feature, wherein if a monitored event does not occur within a predetermined amount of gameplay, a guaranteed event is triggered.	No	See claim 27	Clarke The Applicant accepts that Clarke discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Okada The Applicant accepts that Okada discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Stupak The Applicant accepts that Stupak discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Shuster The Applicant accepts that Shuster discloses the additional integer of claim 27 (but not that it is anticipated when dependent on any of the other preceding claims). Money Back See comments for Clarke above.
38	Gaming apparatus including: means for monitoring gameplay; means for monitoring the occurrence of a game event; and event guarantee means for guaranteeing that a game event will trigger within a set amount of gameplay, the event guarantee means including: a trigger component for triggering a game event when the set guarantee gameplay amount is reached without the monitored event having been triggered, and an indicator means for indicating the amount of gameplay remaining to be played before a guaranteed game event will trigger.	No	See claim 1	Since claim 1 is not anticipated, claim 38 is not anticipated by any of the prior art relied upon by the Respondents.

Table of Claims in Innovation Patent 2009101338

Claim
No Integers Allegedly infringed? Respondent’s Anticipation
Submissions Applicant’s Novelty Submissions

1	An electronic gaming machine in which a bet is placed, game events occur and wins are returned, and gameplay and game events are monitored, and including a guarantee feature, wherein if a monitored game event does not occur within a predetermined amount of gameplay, a guaranteed game event is triggered.	No	See claims 1, 27 and 37 of the Standard Patent. Eg Shuster	Shuster The event in Shuster that interrupts the count is an ordinary prize win (col 4:7-13), which is not a “monitored game event” (ACS 53-56 & 70).
2	An electronic gaming machine according to claim 1 further including a display depicting a virtual gauge for indicating an amount of gameplay remaining to be played before the guaranteed game event will trigger.	No	See claims 1, 27 of the Standard Patent. Eg Shuster	Shuster Shuster does not disclose claim 1 and therefore does not disclose claim 2. Shuster’s indicator component 36 displays an ascending numeric count of lost games (col 3:40-67), which is not an indication of the amount of gameplay remaining (ACS 71-72) and also is not a “virtual gauge” depicted on a display.
3	An electronic gaming machine according to claim 1 or 2 wherein the amount of gameplay is determined randomly within a set range.	No	Shuster claim 12: col 13:3-8. Because the total number of wins and losses of a plurality of games will be randomly occurring numbers, a calculation based on these will be random. Cashcade Ex KD1, para 68(b)	Shuster Shuster does not disclose claim 1 and therefore does not disclose claim 3. Claim 12 of Shuster discloses setting the win interval to a predetermined value, which is based on a summation of the results of a plurality of games, subject to a minimum number of wins.  This is not a random determination of the guarantee gameplay amount. Cashcade Cashcade does not disclose claims 1 and 2 and therefore does not disclose claim 3.
4	An electronic gaming machine according to any one of the preceding claims wherein the guaranteed game event is a feature event that includes the provision of a bonus and one or more free games.	Yes	Shuster The guaranteed game event is a feature event consisting of free spins until winning combination results Col 4: 21-36	Shuster Shuster does not disclose claim 1 and therefore does not disclose claim 4. Also, because it does not disclose the integers of claims 2 and 3, when this claim is dependent upon 2 and 3 it is not anticipated.
5	An electronic gaming machine according to claim 4 wherein at least one of the free games is capable of including a wild symbol. [Note that this claim simply requires that the free games or one of them be capable of including a wild feature. Any machine which has a capacity to have any symbols on the reels and to have a pay table which pays awards according to specified combinations of such symbols, satisfies this aspect of the claim. The pay table can treat any symbol as a “wild symbol”.]	Yes	Shuster The nature of the symbols which can represent winning combinations and the combinations which can be recognized by the award schedule are unconfined regardless of whether the play is during the course of the free game or in normal play. Hence the integer is satisfied. col 3:54-58 col 8:47-63	Shuster Shuster does not disclose claim 1 and therefore does not disclose claim 5. This claim simply requires at least one of the free games to be capable of forming a combination that includes a wild symbol.  The use of “wild symbols” is not disclosed in Shuster at all. Also, because it does not disclose the integers of claims 2, 3 and 4, when this claim is dependent upon claim 4 it is not anticipated.

I certify that the preceding two hundred and twenty three (223) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated: 4 March 2013