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Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [ 2020] FCA 778  (5 June 2020)

Last Updated: 5 June 2020

FEDERAL COURT OF AUSTRALIA

Aristocrat Technologies Australia Pty Limited v Commissioner of Patents  [2020] FCA 778 

ORDERS

THE COURT ORDERS THAT:

1. The parties confer and provide to chambers, by 19 June 2020:

(a) draft short minutes as to the appropriate form of orders giving effect to these reasons, with any areas of disagreement marked up; and
(b) any submissions directed to those areas of disagreement (of no more than 3 pages), and indicating whether they contend a further hearing is appropriate.

REASONS FOR JUDGMENT

BURLEY J:

1. INTRODUCTION

1.1 Background

1. In this case the central question is whether a claim to an electronic gaming machine (EGM), which includes a combination of physical parts and computer software to produce a particular outcome in the form of gameplay, is a manner of manufacture within s 18(1A)(a) of the Patents Act 1990 (Cth). The appellant, Aristocrat Technologies Australia Pty Limited, is part of the Aristocrat Leisure Limited group of companies, one of the largest gaming services providers in the world, and a manufacturer of EGMs. Four innovation patents owned by Aristocrat are in issue. Each was granted, and the Commissioner of Patents was asked to examine them pursuant to s 101A of the Patents Act. On 5 July 2018 a delegate of the Commissioner found that none of the claims in any of the innovation patents was a manner of manufacture: Aristocrat Technologies Australia Pty Limited [2018] APO 45. In his concluding observations, the delegate said that there was no substance in the inventions claimed in any of the patents; they were simply for games and the game rules of gaming machines which are to be considered schemes (at [67]).
2. Aristocrat appeals from that decision pursuant to s 101F(4) of the Patents Act. It is not an appeal in a strict sense but a proceeding in the original jurisdiction of the Court which is conducted as a hearing de novo: Commissioner of Patents v Sherman [2008] FCAFC 182; 172 FCR 394 at [18] (Heerey, Kenny and Middleton JJ). Aristocrat has filed extensive evidence from lay and expert witnesses. The Commissioner has a right to appear and be heard on the appeal pursuant to s 159 of the Patents Act, and has done so. She has filed evidence in answer and participated as a party to the proceeding.
3. For the reasons set out below, I find that the appeal should be allowed. In my view the delegate’s analysis failed at the threshold, because the subject matter of the claims in each of the patents is not a mere scheme.

1.2 The innovation patents

4. The innovation patents in suit commenced as divisional applications and form part of a patent family tree described in the decision of the delegate at [8]. Each was ultimately divisional from patent number 2015210489, which was filed on 10 August 2015. After each was filed, it was granted, an examination was requested and an adverse examination report was issued. Aristocrat requested a hearing in respect of each. The delegate then delivered his adverse findings.
5. The patents in suit are:

(a) innovation patent number 2016101967 entitled “A system and method for providing a feature game” (967 patent);
(b) innovation patent number 2017101097 entitled “A gaming machine and method for providing a feature game” (097 patent);
(c) innovation patent number 2017101098 entitled “A gaming machine and method for providing a feature game” (098 patent); and
(d) innovation patent number 2017101629 entitled “A system and method for providing a feature game” (629 patent).

6. Each has a priority date of 11 August 2014.
7. The version of the Patents Act applicable to the patents is that which follows the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth).
8. The parties have helpfully agreed that the specification of the 967 patent is sufficiently similar to the specifications of the other patents for the 967 patent to be used for the purpose of analysis. They also agree that if claim 1 of the 967 patent is a manner of manufacture, then so too are the rest of the claims in all of the patents in suit. Aristocrat contends that if none of claims 1, or 5 (when dependent on claims 1, 3 and 4) of the 967 patent, claim 5 (when dependent on claim 1) of the 629 patent or claim 1 of the 097 patent are found to be for an invention that is a manner of manufacture, then none of the claims of any of the patents will satisfy that requirement. If some, but not all of those claims are for a manner of manufacture, then the Commissioner and Aristocrat seek leave to advance further arguments as to the validity of the balance of the claims.
9. For present purposes it has been necessary to consider only claim 1 of the 967 patent.

2. THE EVIDENCE

2.1 The lay evidence

10. Mark Dunn has since 2011 been the Executive Vice President and General Counsel of Aristocrat Leisure Limited, the parent company of Aristocrat. He gives evidence that the Aristocrat group of companies was founded in 1953 and is now one of the largest gaming services providers in the world. Aristocrat Leisure Limited is included in the ASX “Top 30” companies. He says that its business and success is focussed on innovation in the gaming industry, in which it invested over $400 million in Australia in 2018. He also gives evidence that the “Lightning Link” product, a linked progressive jackpot machine with many different themed games, is currently Aristocrat’s highest revenue-producing game in Australia. He was not cross-examined.
11. Nicholas George Mountfort is a patent attorney who since 2003 has been a principal at Griffith Hack. He has been engaged by Aristocrat and its related entity Aristocrat Technologies, Inc. since 2006 and is responsible for managing the patent portfolio of those companies. He gives evidence that Aristocrat, as at 26 February 2019, had 611 granted standard patents in force in Australia, and that in the period from 1999 until 2018, Aristocrat has been granted or had certified 700 patents. He exhibits a sample of Aristocrat’s granted patents to demonstrate that they are similar to those under present consideration. He says that Aristocrat’s Lightning Link product is an embodiment of several of the claims of the patents in suit, including claim 1 of the 967 patent. He also gives evidence that over 950 similar gaming patents have been granted to Aristocrat’s competitors (IGT, Konami, Aruze and Scientific Games). Mr Mountfort was not cross-examined.
12. John Dominic Lee is a partner of Gilbert + Tobin lawyers and the solicitor for Aristocrat. He exhibits Part 2.9 of the current and past versions of the Australian Patent Office’s Manual of Practice and Procedure, which concerns manner of manufacture, and also exhibits an internal document produced by the Commissioner entitled “Examination Practice following the High Court decision in D’Arcy v Myriad Genetics Inc”. He was not cross-examined.

2.2 The gaming experts

13. David Anthony Little has been a Director of Game Design at Lightning Box Games Pty Ltd since 2004. He obtained a Bachelor of Business majoring in accounting from Charles Sturt University in New South Wales in 1992. He began to work as a game designer at Olympic Video Gaming Pty Ltd in early 1994, where he designed about 30 games. In 1998 he was employed by IGT Australia Pty Ltd, where he worked as lead game designer on about 8 games. In 1999 he co-founded Gameworks International Pty Ltd, an independent third party supplier of EGMs to the gaming industry, where his role was the conception of the theme, development of the mathematics and promotion of games in order to have various games achieve regulatory approval and release into the market. In December 2004 he co-founded Lightning Box Games Pty Ltd, where he has been in a similar role. Since then he has developed about 60 games, all with varying types of feature games, jackpots or unique reel types. He has developed his knowledge of mathematics for EGMs and online games and has researched games on the market. Although not a computer software programmer, he has a basic knowledge of software engineering and works closely with software engineers.
14. Mr Little was retained by the solicitors for Aristocrat and gives evidence of game design industry knowledge, in particular with respect to the state of knowledge concerning EGMs as at the priority date. He gives evidence of the process of the design of an EGM, which in his view typically involves a game designer/mathematician, an artist, a sound composer, one or more software engineers and quality assurance people. Mr Little also provides a review of the patents, and comments on what he considers to be the “technical aspects of the inventions” the subject of the patents, which he says he had not encountered before the priority date. In his second affidavit, Mr Little gives evidence in response to the gaming experts called by the Commissioner. He also participated in the provision of a joint expert report with the other gaming experts and gave oral evidence concurrent with those experts, during which he was cross-examined.
15. Matthew William Deitz has since February 2016 been engaged in the position of Game Design Tech Lead at High Roller Gaming Pty Ltd. In 2010 he was awarded a Bachelor of Science from the University of Western Sydney majoring in mathematics. In January 2011 he was employed in the graduate program at Aristocrat. In Mid-2012 he commenced employment at Konami Australia Pty Ltd, a gaming machine manufacturer, as a game designer where he worked on new game development, ports and associated mathematical modelling.
16. Mr Deitz was retained by the solicitors for Aristocrat and gives evidence that he first became aware of Aristocrat’s “Lightning Link” suite of games in 2014, meaning that he is familiar with the use of a game structure and concept that was used in several different games, each with a different theme. He also gives evidence about what he considers to be the “technical contributions” of the 967 patent and concerning the significance of the mathematics used in Lightning Link. In his second affidavit, Mr Dietz gives evidence in response to the gaming experts called by the Commissioner. He also participated in the provision of a joint expert report with the other gaming experts and gave oral evidence concurrent with those experts, during which he was cross-examined.
17. Mark Nicely obtained a Bachelor of Science (Computer and Systems Engineering) from the Rensselaer Polytechnic Institute in New York in 1983. From 1997 until 1999, he was the Director of Gaming Mathematics at Silicon Gaming in California. From 2001 to 2005 he was in a gaming designer director role at Wagerworks in California, before it was taken over by IGT, the world’s largest gaming machine manufacturer, in 2005. Mr Nicely worked at IGT part-time until 2014 and also did gaming consultancy work. Since 2014 he has worked as a full-time consultant. Mr Nicely has been named as an inventor on over 180 gaming-related patents, of which at least 150 are for EGM systems.
18. Mr Nicely was retained by the solicitors for the Commissioner. In his written evidence he responds to the evidence of Mr Little and Mr Dietz. He joined with them and Mr Yorg in the preparation of a joint expert report and was cross-examined during the course of giving concurrent evidence with them.
19. Michael Yorg obtained a Bachelor of Science (Computer Science) from California Polytechnic State University in San Luis, California in 2000. From 2005 to 2016 he worked at IGT in San Francisco in a number of different roles with a heavy focus on EGM game implementation, including the design and development of software for EGMs. Those roles included game engineer, Lead Game Engineer in Interactive Game Engineering, Manager then Senior Manager of Interactive Game Engineering, Game Studio Director and Senior Manager of Interactive R&D. From 2016 to 2018 he was the Director of Server Engineering at Skillz in San Francicso, an online mobile multiplayer competition platform.
20. Mr Yorg was retained by the solicitors for the Commissioner, and gives evidence about his knowledge of EGMs, and what he considers to be the substance of the invention in the patents. He responds to the evidence of Mr Little and Mr Deitz and joined with them and Mr Nicely in the preparation of a joint expert report and was cross-examined during the course of giving concurrent evidence with them.
21. Mr Little, Mr Deitz, Mr Nicely and Mr Yorg are referred to as the gaming experts.

2.3 The Human Computer Interaction Experts

22. Andrew Jeremy Gavin Cockburn has since 2009 been a Professor in the Department of Computer Science and Software Engineering at the University of Canterbury in Christchurch. He is an expert in the field of Human Computer Interaction (HCI) which is a multidisciplinary field of study focussing on the design of computer technology, in particular on the interaction between humans (the users) and computers. He was retained by the solicitors for Aristocrat. In his evidence he describes the HCI field and what he regards to be the three main goals for that field, being learnability, efficiency and subjective satisfaction. He reviews the patents and gives evidence of the matters disclosed which are likely in his opinion to have an impact on player experience, in particular the player’s engagement with the EGM and the entertainment derived from its use. He further gives evidence of the characteristics exhibited in the patents that are relevant to learnability and subjective satisfaction. Professor Cockburn was supplied with the affidavits of Mr Deitz and Mr Little and identifies where in their evidence he perceives to be an overlap with the HCI principles that he has identified. He also provides affidavit evidence in response to the evidence of Professor Billinghurst, with whom he prepared a joint expert report. He was cross-examined during the course of giving concurrent evidence with Professor Billinghurst.
23. Mark Billinghurst has since 2015 been Professor of Human Computer Interaction within the School of Information Technology and Mathematical Sciences at the University of South Australia, and since 2018 has also been a Professor at the University of Auckland. He was retained by the solicitors for the Commissioner and gives evidence in response to that of Professor Cockburn, and joined with him in the preparation of a joint expert report and participated in giving concurrent evidence with him during which he was cross-examined.
24. Mr Cockburn and Mr Billinghurst are referred to as the HCI experts.

2.4 The joint expert reports

25. The gaming experts produced a joint report directed to the consideration of a number of questions that were the subject of varying levels of disagreement between them in their written evidence. The first question sought to elicit evidence as to the extent that each expert considered that “features of the inventions claimed in the patents” were included in listed, known EGMs as at the priority date. The second question asked the experts to indicate what contributions or advantages (if any) were conferred by the inventions claimed in the patents having regard to those listed EGMs as at the priority date. The third invited the experts to give their opinion as to what is the “substance” of the invention claimed in the patents.
26. The HCI experts also produced a joint report. In it, they were asked and responded to three questions. First, to identify what interface design elements are prescribed in the patents. Secondly, to indicate to what extent, if at all, those design elements are likely to increase learnability, subjective satisfaction, and user engagement. Thirdly, to indicate what contributions, if any, are made by the inventions claimed to the field of HCI generally, and HCI with EGMs, as at the priority date.
27. Each of the experts did their best to assist the Court in the provision of their written and oral evidence. However, as the Full Court explains in Commissioner of Patents v Rokt [2020] FCAFC 86 at [71] – [73] and [85], the role of expert evidence in construing the specification and also in considering the question of manner of manufacture is limited. In relation to the former, it is to place the Court in the position of the person acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 at [24]; D’Arcy v Myriad Genetics [2015] HCA 35; 258 CLR 334 at [12]. Typically, the Court will read the specification with the benefit of expert evidence as to the meaning of words that are terms of art, or with an explanation of technical concepts relevant to the understanding of the invention as described and claimed. The question of construction remains with the Court: Rokt at [73]. In relation to the latter, the task of construing the specification involves arriving at a characterisation of the invention claimed in order to determine whether or not it is in substance a manner of manufacture. That involves the application of the common law principles developed to separate patentable inventions from schemes or methods of business, which is an issue to be determined by the Court, and not the evidence of an expert, who necessarily will not be familiar with those principles: Rokt at [85].
28. As a consequence of these matters, much of the evidence given by the experts was extraneous to the real dispute between the parties.

3. THE AGREED COMMON GENERAL KNOWLEDGE

29. The parties agreed that the following represented part of the state of the common general knowledge as at the priority date of the patents.

Components and Features of an EGM

30. At August 2014, an EGM was a physical device that was available for sale to licenced venues such as casinos, hotels and clubs. EGMs typically consisted of:

(a) a central display area or screen that displays the game(s) to be played and other game-related information (for example, prizes won and available credits);
(b) relative to the central display area or screen, upper and/or lower display areas of screens that display various information about the game in the cabinet, including the name of the game, the supplier and other pertinent information;
(c) a random number generator;
(d) a game controller which controlled gameplay by executing software stored in memory;
(e) buttons for user interaction, either touch screen or physical buttons;
(f) a credit input mechanic, being either a cash note input or ticker reader;
(g) a coin out or ticket out mechanic;
(h) artwork featured above the display in digital form as well as artwork in hardcopy on the belly of the EGM; and
(i) speakers to play music, sound effects and announcements.

31. In 2014, although most EGMs comprised certain core physical or hardware components, such as those described above, including computer components, they were distinguished from each other by the way in which features were introduced to utilise the physical or hardware components to provide different products that would engage and entertain users in different ways.

Reels

32. At August 2014, an EGM commonly consisted of five reels of symbols being displayed, each of which spun vertically and stopped at random positions. The concept of the “reel” evolved from the old mechanical games where there was physically a reel carrying a fixed number of symbols displayed in an area showing three symbols on each reel at a time. The symbols were arranged on the reels in a fixed order. The player won or lost depending upon the appearance of predefined symbol combinations and/or particular types of symbols, such as scatters (which provide an award wherever they appear) or wilds (which substitute for other ordinary symbols).
33. Until the 1980s, EGMs used mechanical or electro-mechanical technologies. In these, the different symbols were usually printed in a specified order on strips fixed to the circumferential surface of the reels. An image of an example of reels of this type of mechanical and electro-mechanical reels is below:

34. The number of possible combinations of symbols in EGMs using mechanical or electro-mechanical technologies was limited by the size of the reels and the strips of symbols that fit them.
35. In the 1980s, EGMs started using electronics, including computers, electronic circuitry and electronic display screens such as video displays. In these, the different symbols appear on the electronic display in the same way as traditional spinning reels although they are in fact virtual reels or video reels. The number and distribution of the symbols on the virtual reel strips is part of the design of the game that is ultimately reflected in the game software.
36. The five reels of symbols commonly found in EGMs in 2014 were generally arranged so that the symbols were displayed in a grid or matrix following the completion of a spin. In identifying the symbols in such a grid or matrix, each vertical line of symbols was a column referred to as a reel and each horizontal line of symbols was often referred to as a row. For example, in the following grid or matrix of symbols, the columns are reels numbered 1 to 5 and the rows are designated A to C:

37. The number of possible combinations of symbols in an EGM using virtual or video reels is in principle unlimited.

Win Lines on EGMs

38. EGMs function by a player inserting credits, in the form of money or some other form of payment, which allows for play to commence. A player is able to select the value of each bet he or she is prepared to make. A win is evaluated by having regard to the amount wagered and to occurrences of a winning symbol combination on predefined lines (also known as pay lines or win lines). A player can choose to place a wager to cover one or more win lines.
39. At August 2014, an EGM’s reel strips defined the set order in which symbols will appear on the various reels, based on the randomly selected stop location generated for each of the five individual reels. Each of the five reels was independent from the other reels, and the strips of symbols that appeared on one reel could be the same or different to the symbols that appeared on the other reels within that same game, depending upon the design of the reel strips. The specific number of given symbols (the “weighting” of symbols in comparison to other symbols on the reel) makes certain combinations more or less likely to be generated upon a random spin than other combinations.
40. The total number of symbols on a given reel is used to define its “reel strip order”, the order of symbols from stop position 0 (or stop position 1) to stop position (n), being defined by the game designer and comprising all symbols that may appear on the reel. Theoretically, there is no limit on the number of symbols on a reel, though in practice limits arise for ease of game design.
41. Therefore, at August 2014, a virtual reel strip had nominal stop positions. Each stop position corresponded to a symbol. The total number of symbols (i.e. stop positions) was the “reel strip order” from stop position 0 or 1 to stop position (n). The composition of symbols on each reel strip (i.e. what symbol is allocated to each stop position) was determined by the game designer.
42. At August 2014, a random number generator was used to determine the stop position for symbols on virtual reels. A stop position is independently determined for each of the five reel strips. The stop position of one reel strip did not affect the stop position of any other reel strip.
43. There were, at August 2014, numerous win lines that could be wagered, and the grid of symbols was used to determine whether appropriate winning combinations had been formed on these win lines. Winning combinations could also be formed if a certain symbol appeared anywhere in the grid (without reference to win lines). These are commonly called “scatter” symbols and were common in most EGMs at August 2014. EGMs often had different bonus triggering events or award payouts based on the quantity of scatter symbols of the same type. For example, three scatter symbols could pay 100 credits while four scatter symbols could pay 250 credits.
44. Since the introduction of gaming machines using electronics, different ways of stimulating player interest became common, especially through the use of free games, bonus games or secondary games in addition to the main or base game. A common way for players to qualify for these features was for them to be awarded when a specific symbol (including, for example, a scatter symbol) or a particular combination of symbols appeared in the main or base game when played. The use of scatter symbols was a typical means to trigger such features.

Regulatory standards

45. The gaming industry in Australia is (and was at August 2014) regulated by state-based authorities. There were, at August 2014, a set of national standards that apply to EGMs, the “Australia New Zealand Gaming Machine National Standard”. These regulated the minimum return to player. This is the theoretical proportion of money that must be returned to players over the entire lifecycle of a particular EGM.

4. THE 967 PATENT

46. The principles applicable to the construction of the specification and the claims are not in dispute, and do not require repetition. They are succinctly summarised in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; 222 ALR 155 at [67] (Hill, Finn and Gyles JJ) and Décor Corporation Pty Ltd v Dart Industries Inc [1988] FCA 682; 13 IPR 385 at 400.

4.1 The specification

47. The 967 patent is entitled “A system and method for providing a feature game”. The field of the invention is said to relate to a gaming system and a method of gaming. The “Background to the Invention” states (page 1 lines 12 – 17):

In existing gaming systems, feature games may be triggered for players in addition to the base game. A feature game gives players an additional opportunity to win prizes, or the opportunity to win larger prizes, than would otherwise be available in the base game. Feature games also offer altered game play to enhance player enjoyment.
A need exists for alternative gaming systems.

48. The “Summary of the Invention” contains a consistory clause in the same terms as independent claim 1 (reproduced in section 3.2 below) and dependent claims 2 – 5. There follows a brief description of figures 1 – 10B. Thereafter the “Detailed Description of a Preferred Embodiment of the Invention” commences with an overview (page 3 lines 17 – 30) by reference to a game structure as follows:

Referring to the drawings, there are shown example embodiments of gaming systems having components which are arranged to implement a base game, from which may be triggered a feature game. In these embodiments, symbols are selected from a set of symbols comprising a plurality of configurable symbols and non-configurable symbols. The gaming system incorporates a mechanism that enables the symbols to be configured. In one example, the gaming system is configured so that a feature game is triggered when six of the configurable symbols are selected for display. The invention is not limited to triggering a feature game only when six configurable symbols are selected, however. In other embodiments, any number of configurable symbols may trigger the feature game.
Furthermore, each of the configurable symbols comprises a variable portion which is indicative of the value of a prize. When the feature game is triggered, the player is guaranteed to win the accumulated value of the prizes indicated by the variable portions of the configurable symbols.

49. An embodiment of a “configurable symbol” is later described in more detail, by reference to figures 9A – C (set out below) as being a symbol that includes a common component and a variable component.

50. The common component in figures 9A – C is the pearl 902 and the variable component is the indicia 904 overlaying the pearl. In this example the indicia numerals on the pearls directly indicate the value of the prize, but in others they may indirectly do so, for example by referring to “major” or “minor”, or the prize may be represented by an icon such as a representation of a car.
51. After the overview, the specification identifies the “General construction of [the] gaming system”. In this part of the specification the EGM architecture is described. The specification says that gaming systems can take a number of different forms. One is a “standalone gaming machine” where all or most of the components required for implementing the game are present in a player operable EGM. In another form, a distributed architecture is provided where some of the components required are present in a player operable EGM and others are located remotely, such as by being networked to a gaming server.
52. Figure 1 is a block diagram of the core components of a gaming system:

The specification at page 4 lines 15 – 24 says of these components:

Irrespective of the form, the gaming system 1 has several core components. At the broadest level, the core components are a player interface 50 and a game controller 60 as illustrated in Figure 1. The player interface is arranged to enable manual interaction between a player and the gaming system and for this purpose includes the input/output components required for the player to enter instructions to play the game and observe the game outcomes.
Components of the player interface may vary from embodiment to embodiment but will typically include a credit mechanism 52 to enable a player to input credits and receive payouts, one or more displays 54, a game play mechanism 56 including one or more input devices that enable a player to input game play instructions (e.g. to place a wager), and one or more speakers 58.

54. It may be seen that by having a credit input mechanism, a game play mechanism, speakers and displays, the EGM provides an interactive means of playing a game. That means is computerised having regard to the functions performed by the processor 62 and memory 64. The EGM is a device of a particular construction, known and recognised by those in the art. The specification describes the operation of the machine at page 4 lines 26 – 38 as follows:

The game controller 60 is in data communication with the player interface and typically includes a processor 62 that processes the game play instructions in accordance with game play rules and outputs game play outcomes to the display. Typically, the game play rules are stored as program code in a memory 64 but can also be hardwired. Herein the term “processor” is used to refer generically to any device that can process game play instructions in accordance with game play rules and may include: a microprocessor, microcontroller, programmable logic device or other computational device, a general purpose computer (e.g. a PC) or a server. That is a processor may be provided by any suitable logic circuitry for receiving inputs, processing item in accordance with instructions stored in memory and generating outputs (for example on the display). Such processors are sometimes also referred to as central processing units (CPUs). Most processors are general purpose units, however, it is also known[n] to provide a specific purpose processor using an application specific integrated circuit (ASIC) or a filed programmable gate array (FPGA).

55. A gaming system in the form of a standalone EGM is depicted in Figure 2 as follows:

56. The relevant features are a console 12 having a display 14 on which are displayed representations of a game 16 in the form of a video display unit, liquid crystal display plasma screen or the like. The bank of buttons 22 enables a player to interact during gameplay. There is a credit input mechanism 24, and the top box 26 may carry artwork 28 with pay tables and details of bonus awards.
57. The operative components of a typical EGM are depicted in Figure 3 (not shown), and are described as including a game controller containing a processor mounted on a circuit board. Instructions and data to control operation of the processor are stored in a memory (volatile or non-volatile), which is in data communication with the processor. Hardware meters are included for the purposes of ensuring regulatory compliance and monitoring player credit. A random number generator module generates random numbers for use by the processor. The specification observes that persons skilled in the art “will appreciate that the reference to random numbers includes pseudo-random numbers”.
58. The game controller includes an input/output interface for communicating with peripheral devices including displays, a touch screen, credit input and output means and a printer. The EGM may include a communications interface such as a network card which may send status information, accounting information or other information to a bonus controller, central controller, server or database and receive data or commands from one or more of these.
59. At page 6 lines 6 – 17 the specification states:

In the example shown in Figure 3, a player interface 120 includes peripheral devices that communicate with the game controller 101 including one or more displays 106, a touch screen and/or buttons 107 (which provide a game play mechanism), a card and/or ticket reader 108, a printer 109, a bill acceptor and/or coin input mechanism 110 and a coin output mechanism 111. Additional hardware may be included as part of the gaming machine 100, or hardware may be omitted as required for the specific implementation. For example, while buttons or touch screens are typically used in gaming machines to allow a player to place a wager and initiate a play of a game any input device that enables the player to input game play instructions may be used. For example, in some gaming machines a mechanical handle is used to initiate a play of the game. Persons skilled in the art will also appreciate that a touch screen can be used to emulate other input devices, for example, a touch screen can display virtual buttons which a player can “press” by touching the screen where they are displayed.

60. Figure 4 (not shown) shows the main components of an exemplary memory containing RAM, EPROM and a mass storage device.
61. In one embodiment a server remote from the EGM implements part of the game and the EGM implements another part of the game, thereby the server and machine collectively providing a game controller. A database management server may manage storage of game programs and associated data for downloading or access by the gaming devices. This is referred to in the specification as a “thick client embodiment”.
62. In a “thin client embodiment” as described in the specification, the remote game server implements most or all of the game and the EGM essentially only provides the player interface.
63. The specification explains that other client/server architectures are possible and that further details are provided by reference to two other patents, which are incorporated by reference into the specification. The person skilled in the art “will appreciate that in accordance with known techniques, functionality at the server side of the network may be distributed over a plurality of different computers”.
64. The specification then provides further details of the gaming system by reference to its operation in the placing of a wager in order to play a game:

The player operates the game play mechanism 56 to specify a wager and hence the win entitlement which will be evaluated for this play of the game and initiates a play of the game. Persons skilled in the art will appreciate that a player’s win entitlement will vary from game to game dependent on player selections. In most spinning games, it is typical for the player’s entitlement to be affected by the amount they wager and selections they make (i.e. the nature of the wager).

65. The specification states that in Figure 6 (below) the processor 62 of game controller 60 of gaming system 1 is shown implementing a number of modules based on game program code 641 stored in memory 64. It says that “persons skilled in the art will appreciate that various...modules could be implemented in some other way, for instance by a dedicated circuit”. In Figure 6 block 50 is the player interface:

66. Figure 7 provides a flow chart of a sequence of steps and decisions made during the course of a base game with a feature game that may be triggered. It is unnecessary to reproduce it here. Suffice to say that it, and the text that accompanies it, describe the steps whereby a base game is commenced using symbols that include configurable symbols. When a trigger event occurs, which may be when a certain number of configurable symbols appear on the display, a free feature game is initiated whereupon the configurable symbols are held in their display positions and the additional feature game is run. The feature game in operation may use symbols that include the configurable symbols and symbols from the base game, or different symbols. The feature game will play until it and any additional free games are played. Prizes are incremented throughout the play of both the base game and the feature game.
67. In summary, the embodiment describes the steps whereby the EGM:

(a) holds the configurable symbols that triggered the feature game, during the rounds of the feature game;
(b) awards the player with a predefined number of rounds of the feature game;
(c) selects, via the symbol selector, and displays symbols for the display positions that do not currently hold a configurable symbol;
(d) for any configurable symbols that are selected, holds them during further rounds of the feature game;
(e) for each round of the feature game, increases or decreases the number of rounds remaining in the feature game according to whether an additional configurable symbol is displayed in that round;
(f) checks, using the outcome evaluator (which, the evidence discloses, is software programmed to perform this function), whether the number of configurable symbols displayed has reached a predefined number to trigger a jackpot;
(g) pays the accumulated value of the individual prizes as indicated by the variable components of the collected configurable symbols.

68. The specification then describes some further alternatives and examples. The steps described in (a) – (g) are performed on the EGM by the use of a computer system that is programmed to interface with the hardware and firmware elements of the gaming machine. This is made explicit at the conclusion of the specification, which says (page 16 lines 9 – 15):

As indicated above, the method may be embodied in program code. The program code could be supplied in a number of ways, for example on a tangible computer readable storage medium, such as a disc or a memory device, e.g. EEPROM...or as a data signal...Further, different parts of the program code can be executed by different devices, for example in a client server relationship. Persons skilled in the art, will appreciate that program code provides a series of instructions executable by the processor.

4.2 Claim 1

69. Claim 1 of the 967 patent with added integers and emphasis, is as follows:

(1) A gaming machine comprising:
(1.1) a display;
(1.2) a credit input mechanism operable to establish credits on the gaming machine, the credit input mechanism including at least one of a coin input chute, a bill collector, a card reader and a ticket reader;
(1.3) meters configured for monitoring credits established via the credit input mechanism and changes to the established credits due to play of the gaming machine, the meters including a credit meter to which credit input via the credit input mechanism is added and a win meter;
(1.4) a random number generator;
(1.5) a game play mechanism including a plurality of buttons configured for operation by a player to input a wager from the established credits and to initiate a play of a game; and
(1.6) a game controller comprising a processor and memory storing (i) game program code, and (ii) symbol data defining reels, and wherein the game controller is operable to assign prize values to configurable symbols as required during play of the game,
(1.7) the game controller executing the game program code stored in the memory and responsive to initiation of the play of the game with the game play mechanism to:
(1.8) select a plurality of symbols from a first set of reels defined by the symbol data using the random number generator;
(1.9) control the display to display the selected symbols in a plurality of columns of display positions during play of a base game;
(1.10) monitor play of the base game and trigger a feature game comprising free games in response to a trigger event occurring in play of the base game,
(1.11) conduct the free games on the display by, for each free game, (a) retaining configurable symbols on the display, (b) replacing non-configurable symbols by selecting, using the random number generator, symbols from a second set of reels defined by the symbol data for symbol positions not occupied by configurable symbols, and (c) controlling the display to display the symbols selected from the second set of reels, each of the second reels comprising a plurality of non-configurable symbols and a plurality of configurable symbols, and
(1.12) when the free games end, make an award of credits to the win meter or the credit meter based on a total of prize values assigned to collected configurable symbols.

5. THE DECISION OF THE DELEGATE

70. The delegate reviewed authorities concerning the law of manner of manufacture, and noted the objections recorded by the examiner to the patents. In relation to the 967, 097 and 098 patents, the delegate noted at [23] that the examiner issued an adverse report because (emphasis added):

...the inventive concept is in substance directed towards a gaming procedure whereby configurable symbols are retained while non-configurable symbols are removed during a feature game. In essence, the claims are directed to selecting some symbols for display in a base game, and if a feature game is triggered, retaining configurable symbols while non-configurable symbols are removed during a feature game and replaced with symbols from a second set of reels. Furthermore, the mere use of a computer, random number generator, monetary input mechanisms, screens and database to implement this, add nothing of substance to the inventive concept, which does not lie in the way the method is carried out by the computer or processor...

71. In relation to the 629 patent, the examination report made a similar finding, saying, as the delegate records at [24], that the substance of the alleged invention is a “game characterised by the rules which enable particular symbol[s] to be selected and retained for future games, while non-selected symbols are randomly changed in future games. However, a game per se is a scheme or abstract idea and is not patentable subject matter”.
72. The delegate looked to see whether there was any “common aspect” of the inventions claimed in the patents and determined that the “hold and spin” feature was in common to all independent claims. He said that in this aspect, the configurable symbols from the main game are retained in place (hold) while the other symbols are removed and the symbols replaced (spin). In conformity with the findings of the examiners, the delegate considered that this aspect is a “game rule”. He said:

[47] ...A game rule is not an artificially created state of affairs in the sense that it does not provide a technical effect. The game that arises as a consequence of the game rules being applied is similarly intangible and thus not a manner of manufacture. Ultimately the game will generate prize money for the winner and revenue of the gaming machine owner – the generation of prize money and revenue is considered a scheme for making money. Schemes for making money are not considered a manner of manufacture.

73. The delegate then rejected submissions advanced on behalf of Aristocrat which argued that, in the event the claims were found to be to a mere scheme, to the extent it was necessary to identify a “technical contribution”, a “technical effect”, solution to a “technical problem” or an “improvement in computer technology”, the inventions the subject of the claims did so.
74. As will be seen below, I respectfully disagree with the delegate’s characterisation, which was also advanced by the Commissioner in her submissions, being that the invention is a mere scheme in the form of a set of game rules, or a scheme for making money. The facts of the present case do not fit the paradigm, considered in the authorities to which I refer below, of a scheme that has merely been “put into” a computer.

6. THE SUBMISSIONS

75. Aristocrat’s primary submission is that the claim is for an EGM having particular hardware and software components which provides for a feature game having specific characteristics. The machines claimed are not in substance a “mere scheme, an abstract idea, mere intellectual information” (as was the invention considered and rejected in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; 372 ALR 646 at [99]) or merely the rules of a game. All experts agreed that the claim requires the integration of both software and hardware components. Furthermore, Aristocrat contends that the question of manner of manufacture is not to be addressed having regard to integers viewed in isolation, but as a combination of hardware and software. It is the substance of the combination that must be considered, not the disaggregated “common elements”. Here, the claimed invention is a machine upon which wagers can be made and which can only be legally implemented in accordance with the National Standard.
76. Aristocrat relies on the evidence of the gaming experts and the HCI experts predominantly in aid of a secondary argument, which is that in the event that the Court finds that the claim is for a mere scheme, then the invention is not analogous to the unpatentable scheme or abstraction contemplated by the Full Court in Encompass. It relies on the evidence given by the gaming experts in their joint report where they list the advantages achieved by the claimed gaming machine. It also relies on evidence that the operation and functional output of the claimed machines represents an improvement in computer technology and the taking of steps “foreign to the normal use of computers” as described in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; 238 FCR 27 at [96] and [102]. Furthermore, Aristocrat also relies on the evidence of the HCI experts to support the proposition that the invention as claimed presents additional technical improvements in computer technology interfaces.
77. In addition, Aristocrat submits that the invention claimed in claim 1 falls within an established category of patentable subject matter, being new and useful gaming machines; this will “ordinarily be sufficient”: Myriad Genetics at [28]. It submits that the Commissioner has over many years accepted EGMs as patentable subject matter, noting that the Commissioner has accepted over 1,500 granted patents for them. Aristocrat also submits that this Court has twice held EGMs with virtual reels to be patentable subject matter, in Neurizon Pty Ltd (ACN 077 012 376) v LTH Consulting and Marketing Services Pty Ltd (ACN 061 363 139) [2002] FCA 1547; 58 IPR 93 at [15] and [101] (Dowsett J) and Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735; 114 IPR 28 at [60] (Nicholas J). Aristocrat submits that the EGMs of claim 1 of each patent satisfy the two requirements set out in National Research Development Corporation v Commissioner of Patents [1959] HCA 67; 102 CLR 252 (NRDC), being that they are products of human action which have economic utility.
78. The Commissioner defends the decision of her delegate. She submits that the authorities make clear that it is necessary to consider the substance of the invention as claimed, and not merely the form of the claims. This is to be assessed in the light of the description in the specification and the common general knowledge before the priority date. When this is done, it is apparent that the invention is a scheme or set of rules for carrying out a game, which is not patentable subject matter according to traditional principle.
79. In a submission central to her contentions, the Commissioner submits that the scheme or set of rules is implemented using generic hardware and software components of an EGM to perform their ordinary functions. There is no technical contribution in the way that the machine carries out the scheme and no improvement in the operation or functionality of the machine as distinct from the fact of its implementation of the scheme. Rather, the ingenuity in the invention lies in the scheme or rules for carrying out the game. No ingenuity is claimed in relation to the manner of implementation of the scheme. She submits that as the patents and evidence make clear, EGMs are computers that consist of a number of hardware and software components which were commonplace before the priority date. The only features that distinguish the invention from other EGMs relate to the scheme or rules of the game that it is configured to implement.
80. The Commissioner submits that the effect of Encompass was to endorse and apply the principle that a mere scheme or idea implemented using “generic” computer technology is not a manner of manufacture. She submits that the patent applications are concerned with the field of gaming, and that EGMs consisting of a number of standard hardware and software components were commonplace as at the priority date. Accordingly, in the context of this field and at that level of description, an EGM is a “generic computer” as that expression is to be understood in Encompass. The Commissioner submits that a “guiding consideration” identified in Encompass is whether an invention is implemented on computers that may be regarded as “generic”. She submits that the reasoning in Encompass illustrates that a claimed invention may be characterised as merely requiring “generic computer implementation” if the specification and claims leave the hardware and software uncharacterised, referring to [59] – [61] and [99] – [100] of that decision and also to McKerracher J in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956; 148 IPR 164 at [84], [93] – [97], [99] and [100]. In this regard, the Commissioner submits that in claim 1 of the 967 patent, integers 1.1 to 1.6 reflect the components of an EGM, including hardware (for example a display) and software (for example a random number generator) and some that are a combination of both (for example a game controller comprising a processor and memory). These were all standard components of EGMs. Integers 1.7 to 1.12 deal with the conduct of the game and amount to a scheme or set of rules for doing so. Amongst other things, the claim does not define any hardware features of the “game controller comprising a process or a memory” or any technical means by which the necessary processing functions are performed to implement the game. No software application or program code for carrying out the steps is defined by the claims. There is no suggestion of ingenuity in their implementation, which is left entirely to the skilled person reading the claim.
81. The Commissioner submits that the Court is to have regard to the specification and the claims in order correctly to characterise the invention. In this instance, no technical contribution in the way the EGM carries out the particular game is identified, nor any improvement in the operation or functionality of the gaming machine as distinct from the fact of its implementation of the particular game. She submits that the body of the specification does not require anything other than “generic EGM hardware and routine EGM software programming”. That is confirmed by the agreed common general knowledge. The Court need go no further than that to answer the enquiry. She submits that the expert evidence is no more than confirmatory of this position. The claims are in truth no more than an instruction to apply an abstract idea.
82. After the hearing in this proceeding had concluded, and shortly before delivering these reasons, the Full Court delivered judgment in Rokt. I then invited the parties to make brief further written submissions as to the relevance of that decision to the present dispute. Perhaps unsurprisingly, each contended that Rokt favoured the case which they propounded. I have taken those submissions into account in these reasons.

7. CONSIDERATION

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

is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.

84. The other requirements of s 18(1A) of novelty, innovative step, usefulness and that there be no secret use before the priority date are not relevant and are for present purposes to be assumed: CCOM Pty Ltd v Jeijing [1994] FCA 396; 51 FCR 260 at 291 (Spender, Gummow and Heerey JJ). Thus, as the Full Court said in CCOM at 291, whilst a claim for a ball point pen would fail for anticipation and inventive step, it would still be a claim for a manner of manufacture.
85. In Myriad Genetics the plurality said at [12] (citations omitted, emphasis added):

The term "patentable invention" is defined in the Dictionary in Sched 1 to the Act as "an invention of the kind mentioned in section 18." The term "invention" is defined as:

"any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention."

It is not clear, and was not debated in this appeal, how the expression "manner of manufacture" differs from the expression "manner of new manufacture". The definition of "invention" has been used in Commonwealth patent statutes since federation. It allows for exclusion from the class of "invention", and therefore from the class of "patentable invention", anything which is not, on the face of the specification, a proper subject of letters patent according to traditional principles. That anterior exclusion may be based upon an admission, on the face of the specification, which makes clear that the invention claimed is not novel or does not involve an inventive step. This appeal, however, collapses the anterior and subsequent questions — "Is there an invention?" and "Is there a patentable invention?" — into one inquiry. That inquiry requires a definition of the allegedly patentable invention. That definition depends upon the construction of the impugned claims read in the light of the specification as a whole and the relevant prior art...

86. The commencement of any analysis of manner of manufacture requires determining whether the claims in suit, as read in the light of the specification as a whole and the relevant art, which in the present case is the common general knowledge, are for a manner of manufacture. That question may be re-cast by asking whether the invention as claimed is a proper subject of letters patent according to the principles for the application of s 6 of the Statute of Monopolies (21 Jac 1, c 3), and is to be answered according to a common law methodology under the rubric of “manner of manufacture” as developed through the cases: Myriad Genetics at [18], citing NRDC at 269; Rokt at [68].
87. The task of construing the specification involves arriving at a characterisation of the invention claimed in order to determine whether or not it is in substance for a manner of manufacture. That involves the application of the common law principles developed to separate patentable inventions from schemes or methods of business: Rokt at [74].
88. In Rokt the Full Court observed that the injunction against the grant of patents for mere schemes has long been established. It considered the approach taken by the Full Court in recent times, including by reference to: Grant v Commissioner of Patents [2006] FCAFC 120; 154 FCR 62; Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; 227 FCR 378; RPL Central; Encompass; and Watson v The Commissioner of Patents [2020] FCAFC 56.
89. In each of these cases, the question for consideration was whether or not a mere scheme, or plan, was nonetheless a manner of manufacture because invention lay not only in the scheme or plan, but also the means by which it was realised using computerisation.
90. As the Full Court said in RPL Central at [96] (emphasis added):

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. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.

91. The reasoning in the cases mentioned in [88] above involves an initial question of whether the claimed invention is for a mere scheme or business method of the type that is not the proper subject matter of a grant of letters patent. Once that question is answered in the affirmative, the subsequent inquiry becomes whether the computer-implemented method is one where invention lay in the computerisation of the method, or whether the language of the claim involves (to use the language employed in Rokt at [84]) “merely plugging an unpatentable scheme into a computer”. That second inquiry requires consideration of whether the invention claimed involved the creation of an artificial state of affairs where the computer was integral to the invention, rather than a mere tool in which the invention was performed. That enquiry has spawned investigations in the cases to identify whether the contribution of the claimed invention is “technical in nature” or whether it solves a “technical” problem, or whether it merely requires “generic” computer implementation: see, for instance, RPL Central at [99]. In my view it is not necessary in the present case to consider these matters because the initial question should be answered in the negative.
92. The distinction between a mere scheme or a plan on the one hand, and a patentable invention on the other, has been considered in a number of cases. In Grant the Full Court said at [14] (original emphasis):

Business, commercial and financial schemes as such have never been considered patentable...in the same way that the discovery of a law or principle of nature is not patentable. Sir Robert Finlay A-G observed in Re Cooper’s Application for a Patent (1901) 19 RPC 53 at 54, ‘[y]ou cannot have a Patent for a mere scheme or plan – a plan for becoming rich; a plan for the better government of a State; a plan for the efficient conduct of business’. A law of nature becomes patentable when applied to produce a particular practical and useful result (Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110 at [117]). While a mere scheme or plan is not the proper subject of a patent, an alleged invention which serves a mechanical purpose that has useful results does not become such an unpatentable scheme or plan merely because the purpose is in the carrying on of a branch of business (Re Fishburn’s Application (1938) 57 RPC 245 at 248).

93. In Encompass, the Full Court explained that the relevant conceptual demarcation in Grant was between, on the one hand a manner of manufacture, and on the other a “mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable”: at [88], quoting Grant at [32]. It further explained that in the decisions in each of Research Affiliates and RPL Central, the Full Court was seeking to describe this conceptual distinction. In each of those cases, and also in Encompass, the legal character of an unpatentable method that was a mere scheme did not change “merely because the method [was] implemented by the instrumentality of a computer”: Encompass at [91]. The Full Court found that the method claimed was for a scheme for displaying information relating to “entities” (such as persons or corporations) so as to provide “business intelligence” (at [11]). The question then for the primary judge, and for the Full Court on appeal, was whether that scheme was nonetheless patentable because of the manner in which it was implemented.
94. Central to Encompass, and the other cases to which I have referred, is the finding that after close examination of the specification and the claims in issue, the invention as disclosed and claimed is no more than a scheme or mere idea. Once the Full Court made those findings, in each case they proceeded to consider whether, despite this conclusion, the invention was nevertheless patentable. As the Court in Encompass said at [94]:

In considering whether the mere implementation by a computer of an abstract idea or scheme is enough to transform unpatentable subject matter into patentable subject matter, the Full Court in Research Affiliates (at [115]) resorted to the language of “artificial” or “physical” effects, “technical contribution” and suchlike expressions, as used by the High Court in NRDC. By resorting to this language, the Full Court was doing no more than explaining that the claimed method in that case did not transcend, as a matter of substance, what remained an abstract idea or mere information of a kind that has never been considered to be patentable subject matter under Australian law.

95. For the reasons set out below, however, I consider that in the present case the answer to the first question is different. I do not consider that, properly understood, the invention described and claimed, when understood as a matter of substance, is to a mere scheme or plan. It is to a mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way. Accordingly, it is unnecessary to consider the second enquiry.
96. First, the invention as claimed has hardware, firmware and software components that are identified. The EGM is a physical device of a type that is played by those wishing to make a wager. It includes the following specific components:

(1) A display (integer 1.1) that must be able to show reels (integer 1.6(ii)) that are referred to in the specification and known to the person skilled in the art to emulate physical reels used in the old mechanical gaming machines that were used prior to the 1980s (see section 3 above at [33]). Although not stated in the claim, these reels are known to be arranged in columns and rows and contain a multiplicity of symbols, such as those set out in the description of the common general knowledge. The symbols, also identified in integer 1.6(ii), come to rest in a grid-like display. The “configurable symbols” of integer 1.6(ii) provide an aspect of a gameplay. The embodiments described in the specification particularly focus on the use of the configurable symbols.
(2) A credit input mechanism (integer 1.2) that establishes credits on the machine, including at least a coin input chute, a bank note collector, a credit card reader, or a ticket reader. The receipt of credits in this way must be recorded by meters (integer 1.3) that also have the function of recording wins for the purpose of awarding prizes at the end of the game (integer 1.12).
(3) A game play mechanism, including a plurality of buttons (integer 1.5) so that a player can make a wager from his or her pool of credits and commence a game. The buttons may be physical or on-screen.
(4) A game controller comprising a processor and memory that stores software in the form of the game program code and symbol data defining the reels (integer 1.6). It must operate to respond to the initiation of the game by the player (integer 1.7), to select and control the symbols for the play of the base game (integers 1.8, 1.9), and to then trigger a feature game when a “trigger event” occurs (integer 1.10). The game controller allows the conducting of a free game, retaining the previously defined configurable symbols on the display (integer 1.11(a)), replacing the non-configurable symbols by using the random number generator (of integer 1.4) from a second set of symbols defined by the symbol data (integer 1.11(b)), and controlling the display to display the symbols in the second set of reels, each reel containing both configurable and non-configurable symbols (integer 1.11(c)). The configurable symbols have the characteristics explained in the specification of being able to display a variable component and a non-variable component.

97. Furthermore, the expert evidence reveals that the skilled reader understands upon reading the specification that EGMs are subject to regulatory supervision. These standards impose requirements on all EGMs with respect to many areas, including: the construction of their cabinets; the artwork used; the cash input systems used; how the metering of credits is recorded; the manner in which information is presented to users; and the fact that audible alarms must sound if errors are detected or security features require it. The National Standard also imposes requirements on the “return to player”, namely limits on the theoretical/estimated statistical expectations of the minimum and maximum returns of prize money to the player.
98. The result is that to the person skilled in the art, the invention may be characterised as a machine of a particular construction which implements a gaming function. It yields a practical and useful result. Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose. In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character.
99. In this regard I respectfully disagree with the approach to the characterisation of the invention taken by the delegate and the Commissioner, insofar as they first identify the “inventive concept” and then utilise that concept to conclude that the invention is a mere scheme. That rather puts the cart before the horse.
100. The anterior question is whether the claim is for a mere scheme at all. Only if it is found to be so does the analysis proceed to determine whether the scheme has been “put into a computer” (Rokt at [88]). As the passage from Grant at [14] (quoted above in [92]) says (emphasis added): “While a mere scheme or plan is not the proper subject of a patent, an alleged invention which serves a mechanical purpose that has useful results does not become such an unpatentable scheme or plan merely because the purpose is in the carrying on of a branch of business”.
101. In its further submissions, Aristocrat aptly identifies the danger of denuding an invention of patentability by prematurely discounting elements of the claim. Any claim can be stripped back to remove all specific limitations, so that at its core an abstract idea emerges. But where the abstract idea is incorporated into a means for carrying it out, it may result in a manner of manufacture: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173 at [60].
102. Secondly, as the Commissioner accepts, were the EGM of claim 1 to have been implemented mechanically, the old-fashioned way, without using software but instead using cogs, physical reels and motors to create the gameplay, there is no doubt that it would be a manner of manufacture. There would be no occasion to disaggregate the game features from the combination of physical parts. It is difficult to see why the development of an implementation of an EGM that utilises the efficiencies of electronics technology would be disqualified from patent eligibility, when the old-fashioned mechanical technology was not. Such an approach would be antithetical to the encouragement of invention and innovation. To adapt the analogy used in CCOM, a ball point pen that used computerised components to enable it to function more efficiently would be no less a manner of manufacture now than the original ball point pen was when it was first invented. Whether or not it is novel or involves an inventive step is, of course, for separate enquiry.
103. Thirdly, in a recent decision this Court has found that a similar EGM was a manner of manufacture. In Konami Nicholas J considered whether claims for a EGM amounted to a manner of manufacture, that EGM including, in its broadest form: a random prize awarding feature to selectively provide a feature outcome on a gaming console; the console being arranged to offer a feature outcome when a game has achieved a trigger condition; the console including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs; and the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger conditions on the console. A submission was put, based on the obiter dicta reasoning of decision of Emmett J in Dynamite Games Pty Ltd v Aruze Gaming Australia Pty Ltd [2013] FCA 163; 100 IPR 86, that the invention was not a manner of manufacture and that the claims amounted to no more than a mere idea as to the rules of a game.
104. Nicholas J noted at [223] that a “mere idea that does not translate into a claim for a new and useful result is not within the concept of a manner of manufacture because it involves no more than ‘mere discovery’ or ‘discovery without invention’”, citing NRDC at 264. However, he concluded that the inventions in suit claimed are not “mere ideas” but “new and useful gaming machines and new and useful methods of operation producing new and improved results”. Accordingly, the invention so claimed was found to be a manner of manufacture at [224]. The claims in the present case are in my view analogous to that patent, and as the reasoning so expressed is not plainly wrong, I am disposed to follow it.
105. A challenge on the basis of absence of manner of manufacture was also rejected by Dowsett J in LTH Consulting. The claims there were also conceptually similar to those presently in suit. The challenge in that case was also rejected, albeit on a basis that does not reflect the reasoning of more recent case law.
106. Accordingly, in my view the invention as claimed in claim 1 of the 967 patent is for a manner of manufacture. The consequence is that the appeal should be allowed. I will make directions to enable the parties to discuss and formulate appropriate final orders that give effect to these reasons.

Associate:

Dated: 5 June 2020