Team ‘MoM’
Gordon, Edelman and Steward
JJ took an entirely different
approach and considered that the
characterisation of the invention
requires consideration of all the
integers of the claim in light of
the relevant facts and matters in
the specification. An artificially
specific characterisation could
confine any claim to a mere
intellectual idea, and an artificially
generalized characterisation could
remove the element of novelty or
inventiveness from any claim.

Their Honours cautioned
against the risk of artificially
characterising a claim, noting
that the risk is particularly
pronounced where the claim
contains interdependent integers:
“Unless a claim asserts a
monopoly ‘in any integer by
itself’, it is ‘only necessary that
each integer form part of a full
description of the invention’.”
Their Honours considered that
although the rules of a game alone
are not the proper subject matter
of a patent, they may be the proper
subject matter when combined
with physical materials used for
playing the game. To illustrate the
point, their Honours referred to Re
Cobianchi’s Application, in which an
idea for a new way of playing the
game of ‘Canasta’ with differently
marked cards was held to be a
manner of manufacture. At paragraph
119 it was therefore said that:
“In the 21st century, it would be
absurd if the application of this
principle were any different where
the idea of the game is combined
with a digital representation rather
than a cardboard representation of
the game. For instance, as senior
counsel for the Commissioner
properly accepted on this appeal,
the game of Monopoly is patentable
subject matter where it is embodied
in a physical form such as a
designed cardboard board, dice,
and playing characters. It could
not possibly be the case that the
game of Monopoly ceases to be
patentable subject matter if the
graphics are displayed on a machine
rather than on cardboard. To treat
the two differently on the basis that
the digital representation does not
involve a physical transformation of
something would plainly be to allow
form to triumph over substance. As
Heerey, Kiefel and Bennett JJ said
in Grant v Commissioner of Patents,
‘[a]n application is not limited to a
physical transformation’. Rather,
the requirement of a ‘physical
effect’ includes ‘a concrete effect
or phenomenon’ and extends to
‘a change in state or information
in a part of a machine’.”
Reverting to the principals
set out in National Research
Development Corporation, their
Honours noted that it would not be
enough for the scheme to merely
involve the use of a machine to
manipulate abstract ideas [120]:
“Where the manner of manufacture
relies upon some change in state or
information in a machine, then that
change must produce an artificial
state of affairs and a useful result.”
Considering the above, their
Honours determined that the best
characterisation of Aristocrat’s
claim 1 is “an EGM incorporating
an interdependent player
interface and a game controller
which includes feature games
and configurable symbols”. As
set out in paragraph 154:
“In the characterisation of Claim
1, the operation of the game
controller cannot be severed
from the interdependent player
interface in the EGM. The claimed
operation of the game controller,
displayed through the player
interface, is an altered EGM
involving an artificial state of affairs
and a useful result amounting
to a manner of manufacture.”
What Now?
With the Court evenly split as to
whether the appeal should be
allowed, the decision of the Full
Federal Court was affirmed. The
outcome in this greatly anticipated
High Court decision is almost like
making it to the end of a long movie
only to be greeted with a cliffhanger.

Except in this case, there may not
be a sequel, at least any time soon.

Perhaps one useful takeaway is that
whilst the Justices characterised
the invention in different ways,
the High Court was in general
agreement that the requirement
of an “advance in computer
technology” previously proposed
by the Full Court was incorrect,
and that the threshold requirement
in determining an “alleged
invention” should be a low one.

If nothing else, it is clear that
the patentability of computer
implemented inventions is a complex
area of law that even Justices of
the High Court find challenging.

Unfortunately, this area of law is likely
to remain unsettled for some time.

Inspire November 2022
subject matter. In such a case, the
well-known pack of cards is put to
a different use for the purpose of
the new game; but no one would
suggest that there is an invention
because the only difference from
the common general knowledge
lies in the idea of the new game.”
Consequently, their Honours
determined that without any changes
to generic computer technology
in the implementation of the new
game, Aristocrat’s invention should
be characterised as “a claim for a
new system or method of gaming,
in which the claimed invention only
subsists in the feature game, which is
not patentable subject matter”. Their
Honours reasoned that if this was not
the case, every EGM conforming to
the generic physical and hardware
components would be patentable
simply because it allowed a new
game to be played. As set out in
paragraphs 76 of the judgement:
“Neither the primary judge nor the
Full Court made any finding that any
of the integers of claim 1 addressed
the exigencies of the physical
presentation of the operation of the
game devised by Aristocrat. And
it is not apparent from the terms
of the specification of the 967
patent or claim 1 itself that there
is a basis for such a finding. In the
absence of such a finding, there
is no basis for concluding that the
claimed invention is patentable
subject matter. It is no more than
an unpatentable game operated
by a wholly conventional computer,
using technology which has
not been adapted in any way to
accommodate the exigencies of
the game or in any other way.”
5 Helen McFadzean | Principal
BE(Hons) Mechatronics MIP FIPTA
helen.mcfadzean@pof.com.au