Rational Intellectual Holdings Limited - [2018] APO 89

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rational Intellectual Holdings Limited [2018] APO 89

Patent Application: 2017203678

Title:Computer Gaming Device and Method for Computer Gaming

Patent Applicant:                   Rational Intellectual Holdings Limited
Delegate:  M. G. Kraefft
Decision Date:  6 December 2018
Hearing Date:  Written submissions filed on 12 October 2018

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – online poker card gaming system – virtual playing tables – movement of folding player to another virtual table – prevention of further play by player at first table – substance of claimed invention relates to enhancement of how game is managed and played – no manner of manufacture – application refused

Representation: Patent attorney for the applicant: Pizzeys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017203678

Title:Computer Gaming Device and Method for Computer Gaming

Patent Applicant: Rational Intellectual Holdings Limited
Date of Decision: 6 December 2018
DECISION
The claimed invention is not for a manner of manufacture. Moreover there is nothing in the body of the specification that could overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND

Rational Intellectual Holdings Limited (“the applicant”) filed patent application 2017203678 on 31 May 2017. The application is a divisional application based on application 2015203838. That application is also a divisional application based on application 2013206303 which in turn is a divisional application based on application 2006333559. The latter application is based on a US application. The earliest claimed priority date is 20 December 2005.
A first examination report on the present application was issued on 6 March 2018. The report contained an objection that the claims do not define a manner of manufacture. In view of the examination of the lineage of earlier applications in this case, the report also included the following passage:-
“Noting the objections in the attached report, and given that this is now essentially the fourth issuance of the same report, if a response overcoming the objections is not filed within three (3) months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If intending to proceed under either of these provisions the Commissioner will provide you with an opportunity to request to be heard on the matter.”
The applicant requested to be heard of its own volition.
SPECIFICATION
The specification describes the invention as relating in general to gaming and, more particularly, to a computer gaming device and method for computer gaming. As background, the specification discusses the popularity of online poker games over the Internet. The specification identifies at least two problems with such games.
The first is that it is possible for two or more people to play together in collusion, that is, a form of cheating. To do this, the players may use signals designed to keep other players from discovering their scheme. Although Internet and other organisations providing electronic play do their best to eliminate collusion, it can be a major problem. In some cases an online poker player can play two hands at the same table under two different names. The cheater may log in by dialling different servers using different log-in names. The servers may have different Internet or IP addresses, and there is no reliable method for identifying or tracking a person playing under two different names at the same table.
The second problem is that of boredom. Players typically respond serially in a clockwise fashion, each being forced to wait their turn. In some cases, online poker sites attempt to allow players to remain more active by letting players play at more than one table at a time. To do this, a player may open a second window. On the other hand, there are frequent times when the player is idle at both tables, and there are times when the player will need to respond concurrently at both tables.
The specification ends with 54 claims. Claims 1, 13, 25, 37, 43 and 49 are independent claims. These claims may be found at Annex A at the end of this decision.
The subject of the claims varies between a computer gaming system (claims 1 and 49), a method for playing an electronic card game (claims 13 and 37), and a storage medium including instructions that, when executed by a processor, perform a method for playing an electronic card game (claims 25 and 43). Additionally, the claims define the alleged invention with a focus in two alternate aspects. The first is as a network involving server/processor interactions with clients/players (claims 1, 13 and 25). The second is as a player interface to a gaming system (claims 37, 43 and 49).
APPLICABLE LAW
The application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to Sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d), of the Raising the Bar Act. The application was filed after 15 April 2013.
Section 18 of the Patents Act 1990 provides that:-
(1)Subject to subsection (2), 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 within the meaning of section 6 of the Statute of Monopolies; and …
The standard of proof that applies is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
CASE LAW
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in respect to manner of manufacture. At page 275, “… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art …- that its value to the country is in the field of economic endeavour”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:-
“The effect produced by the appellant’s method exhibits the two essential qualities upon which ‘product’ and ‘vendible’ seem designed to insist. It is a ‘product’ because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage … for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:-
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Moreover at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
In Research Affiliates LLC v Commissioner of Patents (“Research Affiliates”), [2014] FCAFC 150, the Full Court of the Federal Court noted that a consistent approach in UK decisions, as distinct from previous Board of Appeal decisions of the European Patent Office, could be of assistance in the Australian context. At [23] of Research Affiliates:-
“In our opinion, it is more helpful to consider the analysis of the issue in the UK decisions which, with respect, provide a consistent approach. Despite being in the context of the statutory exclusion of computer programs ‘as such’, the UK decisions are of assistance in understanding the distinction to be drawn in the Australian context between an unpatentable business method and a claimed invention which may be patentable if the invention results in an ‘artificial effect’, within the understanding of that concept as explained in NRDC.”
At [36], the court further indicated that applying a test of a “technical contribution”, as opined for example in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7, can be useful in an analysis of an “artificial effect”.
SUBMISSIONS
The applicant began its submissions with a summary statement that, properly construed and understood, the claims involve patentable subject matter. With reference to further detailed submissions, the applicant also requested that, if despite the submissions the Commissioner was minded to maintain the objection, the decision be deferred pending resolution of the appeal of the Encompass Corporation Pty Ltd v InfoTrack Pty Ltd decision (“Encompass”), [2018] FCA 421.
In principally addressing the examination report in the present case, the applicant emphasised several reasons as to the claims involving patentable subject matter. Firstly the claims are not concerned with the rules of a poker card game but define a different platform for the player by automatically moving the player around to different seats at different tables.
Secondly the applicant submitted there are at least two ways in which the claims define an interrelationship that provides an improvement in the function of computing or similar devices. The first is that by automatically moving the player to a different table in response to a request to fold, the server or processor allows the player to increase the rate of play akin to multi-tabling but in a manner that can be achieved on a mobile device. This is because moving a player to a different table avoids the need for play to be displayed on a large screen as is required in multi-tabling. At the same time, the server or processor enables the player to be continuously active. The applicant noted this is a situation the player could not achieve in reality, for example, at a casino or tournament. In this way, the applicant stated the system and method of the claims created an artificially created state of affairs which ingeniously addresses the twin problems of collusion and boredom. As to the second way, the applicant stated the specification expressly teaches that the invention provides an improvement in the computer or other device because, by reducing the period of inactivity of the user, the device resources (e.g. processor, interface, etc.) spend less time idle and thus their use is more efficient.
Thirdly the applicant noted the specification identified the economic significance of the endeavour. Referring to the specification, given the increased action of multiple active tables in the virtual table format, if the game is a real money game featuring a rake from the pot for the game provider, then more money may be raked as compared to a conventional table format.
Fourthly the applicant submitted the claimed invention is inextricably linked to a technological setting. The server or processor defined in the claims performs the functions that affect the player’s movement between tables, the rate of play and participation in the play of the particular poker card game that is at stake.
In summary the applicant stated the claimed invention defined a technical interrelationship that discloses a particular useful application that is significantly more than a mere abstract idea.
DISCUSSION
Request For Deferral Of Decision
The applicant submitted that, if despite its submissions the Commissioner was minded to maintain the objection, the decision be deferred pending resolution of the appeal of the Encompass decision.
A number of factors apply in considering a request for deferral of proceedings. From the High Tech Auto Tools Pty Ltd v Ferocem Pty Ltd (“High Tech”) decision, [1993] APO 58, 29 IPR 144, “as a general proposition, where there is a pending court action of direct relevance to a matter before the Commissioner, the Commissioner prefers the court action to be concluded before determining the matter.” The public interest was also considered in that case, which may be put as balancing the grant of a valid patent with the orderly administration of the patent system without unreasonable delay. In balancing the relevant considerations in High Tech, the delegate considered it inappropriate for the Commissioner to defer a matter for any significant period, including awaiting the decision of a court. In Cadbury UK Ltd v Registrar of Trade Marks, [2008] FCA 1126, Finkelstein J acknowledged at [14] that sometimes the law is unclear. In discussing a number of cases at [15] though, Finkelstein J stated “… the authorities establish that a case should not be adjourned for an indefinite period to await clarification of the law.”
In the present case, the applicant is not a party in the appeal. Moreover the subject matter lies in an unrelated field. Consequently the Federal Court appeal cannot be said to be of direct relevance to the present matter. The applicant’s request appears to be merely based on the contentions in the two cases relating to the same statutory basis of law. Furthermore the appeal in the Encompass case was heard on 8 and 9 November 2018. In this vein, the Federal Court decision on the appeal would not appear likely until well into 2019.
I consider it would be inappropriate to defer a decision on the present matter to await the Federal Court decision on the above appeal matter.
Substance Of Claimed Invention
The substance of the claimed invention may be determined in the present case by directing primary attention to the independent claims. Claim 1 defines an architecture comprising a computer gaming system comprising a server that is configured to communicate with a plurality of client devices. The server is alternatively referred to as a processor in several other claims, although some processor functionality may also reside with the client devices. Similarly the client devices in other claims are either inferred, by way of definitions of player interaction with the gaming system, or referred to by other language, such as a player’s computer system or an access element.
In submissions, the applicant made much of the server providing the technological setting, the technical advantages and the economic benefits of the invention, for example because movement of the player to another virtual table improved the functioning of the communication interface since that enabled use of a mobile device with a small screen. Similarly the applicant noted the server enables the player to be continuously active. While these aspects may arguably be so, I would note a server, or a processor, whether remote like a server or as part of a client device, is not a feature of all of the claims. For convenience, I will describe the overall claimed architecture as a gaming system configured to communicate with a plurality of client devices. This is also the principal arrangement illustrated in Figure 1 of the application, as shown below.
With the claimed invention, virtual playing tables are arranged by the gaming system for the purpose of hosting an electronic card game, more particularly a poker card game. A first virtual table has a first plurality of players playing a first hand of a poker card game. This takes place through communication between the gaming system and the client devices of the players. The provision of one or more cards to each of the players as required is also a feature of the gaming system. The claims further define the system being configured to receive, from a first player amongst the first plurality of players, a request to fold the cards of the first player.
The above arrangements would appear to have been well-known practice, at the relevant time, amongst organisations or sites hosting online poker game-playing systems. The background section of the specification itself substantially acknowledges this with discussion of a number of companies hosting online poker games and of a number of variations of the game hosted. This discussion includes some online sites allowing players, who for example fold or intend to fold at one table, to remain more active by letting them play at more than one table at a time, such as by opening a second window.
Consequently the substance of the claimed invention must lie elsewhere. The detail in the claims sheds further light. Firstly, the request to fold from the first player is enabled when gameplay is at a position of another one of the first plurality of players. Secondly, in response to the request to fold, the system is configured to automatically move the first player to a second virtual table. Thus, the first player may fold out of turn and be automatically moved to another virtual table. Moreover the first player plays a second hand at the second virtual table while the first hand is still active for at least one of the other players at the first table. Finally, once the first player is moved, that player is prevented from playing the first hand.
These arrangements would appear to directly address the above-mentioned problems of the background art identified in the specification. As discussed for example in the second paragraph on page 6 of the specification, the automatic movement of a player to another table upon folding at a given table means that the player does not have to wait until the end of the hand at the table at which the player folded before continuing play in another hand. This functionality also helps to reduce collusion by a player or several players, because it inherently separates collusive players who normally sit at the same table.
From the above, I find that the substance of the claimed invention resides in the gaming system enabling folding out of turn and, responsively, automatically moving the folding player to another virtual table whilst preventing further play by the player of the first hand at the first virtual table.
Whether There Is Manner Of Manufacture

It may be said that software, in the present case, embodies the above substance to enable a computing system to run the game online in that fashion. It may also be said that folding out of turn speeds up play for individuals and results in more efficient use of device resources. It may further be said that the movement of folding players to different tables but playing only one table at a time enables the player interface to be a small device with a small screen as opposed to the known arrangement where players may have played at more than one table at a time and thus required a larger screen. In the latter respect, one may also note the system, in some claims, maintaining the appearance that the moved player is still active at the first virtual table until gameplay at that table reaches the position of the first player. Arguably the above aspects may be viewed as having a technical effect.
On the other hand, the efficient use of the devices, the nature of the screen displays for the folding player and for other players, the minimising of collusion between players and the enhancement of player involvement, in the present case, have nothing to do with any improvement in computing functionality, either amongst individual devices or collectively. The substance of the claimed invention clearly relates to an enhancement of how the game is managed and played in an online environment. The distinction made in Research Affiliates at [103] between mere implementation of an abstract idea in a computer and implementation of an abstract idea in a computer that creates an improvement in the computer, would appear to be pertinent in the present case. Similarly the question to the contrary in RPL at [99] of whether the method merely requires generic computer implementation would appear to be relevant. In the present case, an improvement in the computing system or the provision of functionality beyond mere generic computer implementation is not evident. Alternatively and similar to RPL at [96], there does not appear to be any technical contribution to the art where the computing system is integral to the invention, rather than a mere tool in which the invention is performed.
CONCLUSION
I conclude the claimed invention is not for a manner of manufacture. Moreover I consider there is nothing in the body of the specification that could overcome this finding.
In the present case, it is appropriate that the application be refused.
M. G. Kraefft
Delegate of the Commissioner of Patents
Annex A
1.A computer gaming system, comprising:
a server configured to communicate with a plurality of client devices, the server further configured to:
manage a first virtual table of a first plurality of players playing a first hand of a poker card game via a communication interface;
provide to each of the first plurality of players one or more cards for the first hand;
receive communication from a first player of the first plurality of players representing a request to fold the cards of the first player, wherein the request to fold the cards of the first player is made when gameplay is at a position of another one of the first plurality of players; and
in response to the request to fold, move the first player automatically to a second virtual table of a second plurality of players to play a second hand while the first hand is still active for at least one of the other players at the first table, wherein once the first player is moved, the server prevents the first player from playing the first hand.
13.A computer-implemented method for playing an electronic card game, comprising:
providing, by a processor, a first virtual table of a first plurality of players playing a first hand of a poker card game via a communication interface;
providing, by the processor, to each of the first plurality of players one or more cards for the first hand;
receiving, via the communication interface, from a first player of the first plurality of players a request to fold the cards of the first player, wherein the request to fold the cards of the first player is made when gameplay is at a position of another one of the first plurality of players; and
in response to the request to fold, automatically moving, by the processor, the first player to a second virtual table of a second plurality of players to play a second hand while the first hand is still active for at least one of the other players at the first table, wherein once the first player is moved, the processor prevents the first player from playing the first hand.
25.A non-transitory computer-readable storage medium including instructions that, when executed by a processor, perform a method for playing an electronic card game, comprising:
providing a first virtual table of a first plurality of players playing a first hand of a poker card game via a communication interface;
providing to each of the first group (sic) plurality of players one or more cards for the first hand;
receiving from a first player of the first plurality of players a request to fold the cards of the first player, wherein the request to fold the cards of the first player is made when gameplay is at a position of another one of the first plurality of players; and
in response to the request to fold, automatically moving the first player to a second virtual table of a second plurality of players to play a second hand while the first hand is still active for at least one of the other players at the first table, wherein once the first player is moved, the first player is prevented from playing the first hand.
37.A computer-implemented method for playing an electronic card game, comprising:
displaying, at a first player’s computer system, a first virtual table representing a hand of a poker card game, the displaying including simulation of cards dealt to the player and to other players at the first virtual table; and
in response to a first player’s request to fold when gameplay is at a position of another player at the first virtual table, communicating the request to a gaming system, wherein based on a response from the gaming system, the first player is automatically moved to a second virtual table while the first hand is still active for at least one of the other players at the first table, wherein once the first player is moved, the first player is prevented from playing the hand.
43.A non-transitory computer-readable storage medium including instructions that, when executed by a processor, perform a method for playing an electronic card game, comprising:
displaying, at a first player’s computer system, a first virtual table representing a hand of a poker card game, the displaying including simulation of cards dealt to the player and to other players at the first virtual table; and
in response to a first player’s request to fold made when gameplay is at a position of another player at the first virtual table, communicating the request to a gaming system, wherein based on a response from the gaming system, the first player is automatically moved to a second virtual table while the hand is still active for at least one of the other players at the first virtual table, wherein once the first player is moved, the first player is prevented from playing the hand.
49.A computer gaming system, comprising: an access element, including a processor, configured to communicate with one or more servers of the gaming system, the access element further configured to:
display a first virtual table representing a hand of poker game, the displaying including simulation of cards dealt to the player and to other players at the first virtual table; and
in response to a first player’s request to fold made when gameplay is at a position of another player at the first virtual table, communicate the request to the one or more servers of the gaming system, wherein based on a response from the one or more servers the first player is automatically moved to a second virtual table while the hand is still active for at least one of the other players at the first virtual table, wherein once the first player is moved, the first player is prevented from playing the hand.