International Game Technology v Aristocrat Technologies Australia Pty Ltd

[2000] APO 73

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 711501 in the name of International Game Technology

Title:          Electronic Game Method and Apparatus with Heirarchy [sic] of Simulated Wheels

Action: Opposition under Section 59 of the Patents Act 1990 by Aristocrat Technologies Australia Pty Limited.

Decision:          Issued            .

Abstract

Manner of manufacture; Section 40.

In relation to manner of manufacture the knowledge referred to by the opponent's expert witness was clearly not apparent on the face of the specification and hence the situation was the same as under section 18(1)(b) (Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 (22 March 2000)). The evidence provided was however so inadequate as to make any adverse finding impossible on any interpretation of the claims or specification whether on the footing of new use, technical equivalents or workshop improvements.

Claims 1 to 15 are not fairly based and claims 1 and 14 are not clear. In particular the broad inventive concept appears to be simply to incorporate a "wheel of fortune" in a game of chance in a way that the odds of winning a jackpot are less than, and preferably much less than, would apply with a normal wheel game involving a single spin of the wheel. This is not adequately reflected in the claims.

The applicant was afforded an opportunity to amend.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 711501 in the name of International Game Technology and opposition under Section 59 of the Patents Act 1990 by Aristocrat Technologies Australia Pty Limited.

BACKGROUND

Patent application 711501 was filed on 21 March 1997 as 16432/97 and claims convention priority from US 620586 filed on 22 March 1996. I am indirectly informed that the applicant International Game Technology (IGT) is a company incorporated in the state of Nevada, USA.

The application was advertised accepted on 14 October 1999 and on 14 January 2000 the opponent Aristocrat Technologies Australia Pty Limited (Aristocrat) filed its notice of opposition, although then as Aristocrat Leisure Industries Pty Ltd. A statement of grounds and particulars and evidence in support followed in due course. Subsequently IGT advised that they would not serve evidence in answer and the matter came for hearing in Canberra on 5 December 2000.

IGT was represented by Mr R Miller of Spruson & Ferguson, Sydney and Aristocrat by Mr C Berman and Mr C Owens of F B Rice & Co, also of Sydney.

SPECIFICATION

The specification indicates that the invention relates to a computer implemented "wheel of fortune" game. A "wheel of fortune" is said to typically involve a disk or wheel rotatable in a vertical plane with a plurality of numbers, symbols or other indicia positioned on its face. A stationary pointer, for example a resilient flipper, is configured to point to an indicium when the wheel is at rest and, in at least one variant, players wager on which indicium the flipper will point to when the wheel comes to rest after being spun manually.

It is said that in some gaming environments relatively small wagers with the potential for large prizes is desirable and this requires the odds to be very small, in the order of one in one million or smaller. However in traditional "wheel of fortune" game the number of possible indicia and hence the maximum possible odds are limited by the physical size of the wheel. Consequently the object of the invention appears to be to provide a game which incorporates features of the traditional "wheel of fortune" games but which allows the odds to be smaller and advantageously in the order of 1:1,000,000.

The specification includes a consistory statement which is equivalent to the independent claims and then describes a number of diverse embodiments which incorporate either simulated (eg video) or physical wheels under computer control. In either case a virtual wheel can be implemented in memory and positions on the virtual wheel mapped to positions on the physical or simulated wheel so that the number of virtual positions may be larger than the number of physical or simulated positions. Hence the odds of randomly selecting a particular position or its associated indicia can be made smaller than would otherwise be determined by the number of positions or indicia shown on the simulated or physical wheels. Other approaches include displaying only a subset of the indicia associated with a simulated wheel at one time, using multiple linked wheel spins of the same or distinct physical or simulated wheels, or combining the wheel spin with another game of chance. In one embodiment the first part of the game involves a game play based around a typical electronic slot machine display including reels. Particular results in that game act as a trigger for the player to access a wheel game which may include multiple wheel spins.

The independent claims read as follows:

1. A game method, implemented using a computer, comprising the steps of:

   receiving a monetary wager from a player;
   controlling a first display device to display an image of at least a portion of a first simulated value range, said image, during at least a first period of said display, containing a first plurality of indicia including at least one indicium designated as a next level indicium, at least some of said plurality of indicia, upon being displayed, indicating loss of at least part of said monetary wager; and
   upon the next level indicium being selected on the first simulated value range during the first period, controlling a display to show at least a portion of a wheel of fortune rotatable about a first axis, said wheel having a plurality of prize indicators on a face thereof and situated adjacent at least a first pointer for indicating exactly one of said prize indicators after rotation about said first axis has stopped, all of said prize indicators indicating the size of the prize won by said player as a result of said next level indicium wherein no loss of a part of said monetary wager results from any of said prize indicators, said plurality of prize indicators including at least one top award indicium.

1. Apparatus under computer control, comprising:
              a first gaming apparatus which includes

   a first display device for displaying a game of chance;

   a first value wheel activated for a first time period upon a random event occurring in the game of chance, the first value wheel including at least one next level indicium; and
   a second value wheel activated for a second time period upon the next level indicium being selected upon completion of the first time period, the second value wheel including at least one top award indicium.

DECISION

The grounds of this opposition are apparent from the statement of grounds and particulars, that is, that the claimed invention is not a manner of manufacture and that the specification does not comply with section 40 and particular sub-paragraphs 40(2) and 40(3).

Manner of Manufacture

The proposition put for the opponent by Mr Berman is that the claimed invention is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies because it "represents mere new use of known apparatus or methods for an old purpose, or is in respect of technical equivalents of what has gone before, or relates to mere workshop improvements of what has gone before". The only evidence said to support this ground is paragraph 16 of Ms Bryant's declaration where she states her view that "what the applicant is attempting to obtain is not new or is an insignificant variation of what is known in the field of games for electronic games machines. For example, there exists games where, as a feature arising from a trigger condition in a base game, a value wheel is used to award a bonus prize to a player." She then refers to a number of exhibits which appear to be copies of trade brochures including depictions of gaming machines and says that anyone involved in game design in Australia would be readily aware of those examples. Ms Bryant does not say however, nor is there other evidence to indicate, that the disclosures were part of the prior art base for the purposes of section 7 or that the information was otherwise within the common general knowledge in the art before the priority date of the claims.

It is apparent that the opponent invites me to make a finding that the claimed invention is obvious on the face of the specification. However the knowledge referred to by Ms Bryant is clearly not apparent from the specification and hence the situation is the same as under section 18(1)(b) (Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 (22 March 2000)). Since there is no indication that the information was publicly available I can only rely on Ms Bryant's statements concerning what was known to game designers in Australia, presumably at the date her declaration was made. This evidence is so inadequate as to make any adverse finding impossible on any interpretation of the claims or specification whether on the footing of new use, technical equivalents or workshop improvements. Consequently I will give no further consideration to this ground of opposition.

Section 40

The opponent has raised several issues in relation to non-compliance with section 40. Before looking at the various issues in more detail I will address the point made by Mr Miller that I should give little weight to Ms Bryant's evidence because she is employed by the opponent and has made comments in relation to fair basis when she apparently is not trained in patent law.

The fact is that Ms Bryant, being employed as a games designer and having experience in compliance testing, is a person skilled in the art. She has made a statutory declaration that is apparently credible and, since the applicant has chosen not to provide evidence, it provides me with the only indication, however rudimentary, of what a skilled addressee may understand of the description of claims in this case. On the other hand I do not overlook Ms Bryant's association with Aristocrat and possibility of bias and, while I may be assisted by expert evidence, the construction of the specification is something I must undertake myself as a question of law (Brooks v Steel and Currie 14 RPC 46 at 73). Therefore while I give some weight to what Ms Bryant says about the meaning of the specification, that does not apply to the conclusions that she appears to make in a patent law sense.

"first simulated value range" and scope of Claim 1

The meaning of the phrase "first simulated value range"in claim 1 is perhaps the opponents main concern in relation to section 40. However it is interesting that Ms Bryant does not refer to any difficulty with the phase per se but with the scope of lines 5 to 9 of the claim in general. Without any other assistance and noting the submissions of the parties I believe that on reading the specification as a whole "value range" must mean no more than a range or group of distinct indicium and this is the sense that comes from the later reference to the image containing a first plurality of indicia and the appendency of claims 2 and 4. Claim 4 for example states that the simulated value range contains J indicia. I also note that Figure 5 for example shows an image with distinct indicium including integers and the words bonus and bankrupt.

The problem with claim 1 however is that, as identified by Ms Bryant, it is not clear that the features referred to at lines 5 to 9 are meant to define "wheel of fortune" game play or some other base game. I would add that it is not apparent in fact that there is any game of chance elements defined at all. Basically all that is specified is the displaying of an image including a plurality of indicia.

While the terminology used seems to reflect "wheel" type game play as described in the specification and does not sit well with other game play or base games described, the drafter has avoided referring to a "wheel of fortune" as in the second part of the claim and hence I do not think there is any basis for assuming that the first part should be limited to this context. I believe the addressee would be quite confused in trying to identify the scope of the claim in light of the specification and hence I find claim 1 not to be clear.

Fair basis

Ms Bryant suggests that claim could be interpreted at lines 5 to 9 to be defining a conventional spinning reel type base game and that if the claim defines a base game plus a first value wheel then the claim is not fairly based. Ironically Mr Berman argues that the claimed invention is not fairly based because it does not include the base game, although this is on the assumption that the claim is directed to a hierarchy of wheels.

The diverse nature of the embodiments disclosed in the specification and the somewhat ambiguous introductory statements make it difficult to appreciate what is essential to the inventive concept disclosed. However, if I assume there is only a single inventive concept I believe that, at its most basic level, it simply involves incorporating a wheel of fortune in a game in a way that the odds of winning a jackpot are less than, and preferably much less than, would apply with a normal wheel game involving a single spin of the wheel. I believe the skilled addressee would appreciate this after reading the "SUMMARY OF THE INVENTION" part on page 2 and considering the solutions provided which include multiple wheel spins, linking the wheel spin to another game of chance or using a mapping technique with a single wheel spin. Odds as small as 1:1,000,000 may be "advantageous" but as can be seen from the sentence bridging pages 13 and 14 this is only preferable with odds of 1:K, where K is greater than the number of indicia on the wheel, being the main achievement of the invention.

Hence claim 1 does not lack fair basis because it may include in its scope a base game linked with a wheel game. It lacks fair basis principally because there is nothing in the claim that requires the game odds overall to be any different to a normal wheel game. For example there is nothing that clearly indicates that the next level indicium is chosen by a process of chance or that the overall chance of selecting the top award indicium is 1:M where M is greater than the number of prize indicators displayed on the wheel.

I would add in relation to the issue of fair basis that none of claims 2 to 15 appear to adequately define this central feature either. Claim 3 in referring to 1:1,000,000 odds is perhaps claiming by result but is ambiguous in allowing other, admittedly impractical, possibilities. Even claim 11 which refers to odds different to 1/N leaves open games with odds greater than 1/N and is consequently inconsistent with the inventive concept.

Claim 14 - "first value wheel"

In claim 14 the intent appears to be to claim games apparatus for a game including an unspecified game of chance and two wheel spins with the obtaining of a particular result in the first two game levels allowing the player to move to the next level and ultimately to a chance of spinning a top award indicium. This benevolent interpretation is however so far from the plain meaning that I believe the claim must fail for lack of clarity. In particular the wording "value wheel" does not clearly indicate that what is being referred to is a "wheel of fortune" having a plurality of displayed indicium. As a consequence claims 14 and 15 also do not define the invention and lack fair basis as indicated above.

"first display device", "plurality of indicia" etc; Best method of performing the invention

The remainder of the clarity issues identified by the opponent while highlighting the general ambiguity in the claims would I think be fairly easily resolved by a skilled addressee, particularly if the more significant issues identified above are rectified.

In relation to the best method argument, the clarity issue said to underlie this has been addressed above but in any event the lack of a best method is a question of fact and since relevant evidence has not been provided I do not see how this attack could possibly succeed.

CONCLUSION

I agree with the opponent that there are significant deficiencies in the claims in relation to section 40 and find the opposition successful in that regard. I do not however find the opposition made out in relation to manner of manufacture.

Consequently I allow the applicant sixty (60) days from the date of this decision in which to propose amendments overcoming the defects identified. Otherwise I will refuse the application.

COSTS

As the section 40 problems identified are significant and were alluded to in the statement of grounds and particulars I believe an award of costs is appropriate. I therefore award costs against the applicant International Game Technology

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :    Spruson & Ferguson, Sydney

Patent attorneys for the opponent  :    F B Rice & Co, Sydney