IGT v Aristocrat Technologies Australia Pty Ltd - [2009] APO 23

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 754689 in the name of Aristocrat Technologies Australia Pty Ltd

Title: Slot Machine Game and System with Improved Jackpot Feature

Action: Opposition by IGT under s.59 of the Act

Decision: Issued 16 November 2009
Abstract

The opposition fails.
The claims are clear when read in light of the specification to explain the background to the claims, to ascertain the meaning of technical terms and to resolve ambiguities in the construction of the claims. The claims are also fairly based and the specification meets the requirements of Section 40(2)(a) and (b).
The claims are novel. In particular there is no disclosure of an event having a probability that is related to the desired average turnover.
The claims have an inventive step. The evidence filed does not establish that all the features of the claims were common general knowledge at the priority date. Alternatively, if it is accepted that all the individual elements of the claims were common general knowledge, the evidence does not establish that the person skilled in the art would, as a matter of routine, have selected the particular features claimed and combined them in the same way. Additionally the evidence does not establish that the person skilled in the art would have been motivated in some way to alter the respective features in these documents, including the addition of common general knowledge, so that they matched what was claimed.
The claims are clearly directed to a manner of manufacture.
Costs awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 754689 by Aristocrat Technologies Australia Pty Ltd and an Opposition by IGT under s.59 of the Act

BACKGROUND

Patent application 754689 in the name of Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) was advertised accepted on 21 November 2002. Acres Gaming, Inc filed a notice of opposition on 21 February 2003. Following company mergers, the opponent subsequently became IGT. The evidence in support of the opposition was completed on 2 March 2005. On 4 December 2006, Aristocrat informed the Commissioner that they would not be filing any evidence in answer. The matter was originally set for hearing on 7 March 2007 but was deferred.
On 13 April 2007 IGT filed a request to lodge further evidence. This request was accompanied by the declaration in support of the application and a second declaration which constituted part of the further evidence. Aristocrat requested to be heard on the request to file further evidence and a hearing was set down for 27 June 2007.
On 26 June 2007, IGT filed a request for the Commissioner to issue a Notice requiring production of documents (“the Notice”). The Notice would require Aristocrat to produce all documents in the possession of Aristocrat relating to correspondence between Aristocrat, the Queensland Office of Gaming Regulation (“QOGR”) and the Queensland Treasury Office of Gaming Regulation (“QTOGR”) in respect of gaming machine…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2009] APO 23
Decision Date: 16 November 2009

CaseChat Overview and Summary

This decision concerns an opposition by IGT against a patent application for a slot machine game and system with improved jackpot feature lodged by Aristocrat Technologies Australia Pty Ltd. The opposition, which was initially brought by Acres Gaming, Inc. but subsequently passed to IGT, was brought under section 59 of the Patents Act 1990. The opposition was dismissed. The decision that the claims are clear was based on the principle that a claim is to be read as part of the entire specification and that it is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and to resolve ambiguities in the construction of the claims. The decision that the claims were fairly based was based on the principle that a comparison between the matter described in the specification and the claim which defines the scope of the monopoly is to be made. The decision that the claims were novel was based on the reverse infringement test, which requires each and every one of the essential features of the claimed invention to be provided by the prior disclosure. The decision that the claims had an inventive step was based on the principle that the test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not. The decision that the claims were directed to a manner of manufacture was based on the principle that the claims were directed to a prize awarding feature. The decision that costs were to be awarded against IGT was based on the principle that in proceedings such as these it is usually the case that costs follow the event.

Orders