The case has an advanced historical past. For anyone who may be becoming a member of us, or who requires a recap, right here is the story to this point in a nutshell.
- Way again in 2018, a Delegate of the Commissioner of Patents revoked 4 innovation patents relating to the implementation of a ‘feature game’ in an EGM (i.e. a secondary, or bonus, sport triggered by the prevalence of an outlined occasion within the ‘base’ sport of spinning reels) on the premise that the patents didn’t declare a patent-eligible ‘manner of manufacture’ underneath Australian legislation: Aristocrat Technologies Australia Pty Limited [2018] APO 45.
- Aristocrat appealed to the Federal Court the place, at first occasion, Justice Burley decided that the claims have been, the truth is, directed 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’, and that this was patentable material in Australia: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778. (For extra, see Federal Court Finds Computer-Implemented Gaming Machine Patent-Eligible in Australia.) Importantly, this determination was primarily based on consideration of a single declare that the events agreed was consultant of the first claims in all 4 innovation patents. The dependent claims of the patents weren’t thought of in any respect within the judgement.
- The Commissioner of Patents was granted depart to enchantment to the Full Federal Court, the place all three judges on the panel agreed that the choice of Justice Burley must be overturned, and the matter remitted again for consideration of any residual points relating to the dependent claims. However, a plurality of two judges (Middleton and Perram JJ) primarily based their determination on a brand new two step check – first asking whether or not the claims are for a ‘computer-implemented invention’ after which whether or not that invention can ‘broadly be described as an advance in computer technology’ – whereas the third decide (Nicholas J) as an alternative took a extra typical path, observing that the substance of the claimed invention lay within the mere laptop implementation of an unpatentable ‘scheme or set of rules for the playing of a game’: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202. (For extra, see Patent-Eligibility of Computer-Implemented Inventions – Appeals Court Says an ‘Advance in Computer Technology’ is Required.)
- The High Court granted Aristocrat particular depart to enchantment. Unfortunately, on the times of the listening to one decide was absent due to sickness and – for no matter purpose – the Court determined to proceed with a panel of six judges (which, astute observers will be aware, is an excellent quantity). The panel cut up 3:3, that means that, underneath section 23(2)(a) of the Judiciary Act 1903, ‘the decision appealed from shall be affirmed’. This left the judgment of the Full Federal Court intact, however that three judges of the High Court (Gordon, Edelman and Steward JJ) would have reversed it, and the remaining three (Kiefel CJ, Gageler and Keane JJ) would have upheld it on completely different grounds. All six judges of the High Court explicitly or implicitly disapproved the novel two step check of patentability proposed by the plurality within the Full Federal Court: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29. (For extra, see High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws.)
- In accordance with the orders of the Full Court, the case was remitted again to Justice Burley for consideration of the ‘residual issues’. In the ensuing judgment, his honour decided that the impact of part 23(2)(a) of the Judiciary Act is plainly that the Full Court determination is ‘affirmed’, that he was sure, as a single decide of the courtroom, by that call, and that he shouldn’t subsequently have any regard to the reasoning of the High Court in reaching his determination. As a end result, Burley J discovered all of the remaining claims to be unpatentable underneath the plurality’s two step check: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212.
Aristocrat sought depart to enchantment this additional determination of Burley J. Section 25(2) of the Federal Court of Australia Act 1976 stipulates that functions for depart to enchantment should be heard and decided by a single decide until a decide directs that the applying be heard and decided by a Full Court – which occurs very often in instances corresponding to this, together with in Aristocrat’s enchantment from Justice Burley’s authentic determination. On this event, nonetheless, Aristocrat expressly sought that the applying for depart be decided by a single decide, individually and earlier than the listening to of any enchantment. This preserves its choice to have the enchantment eliminated straight to the High Court underneath s 40(2) of the Judiciary Act.
With depart having been granted by O’Bryan J, it appears cheap to assume that Aristocrat will now apply to have the High Court take up the case straight. But for individuals who could also be hoping that it is a short-cut to having the Court resolve the deadlock it reached in 2022, I remorse that issues will not be fairly so easy.
Challenges for Aristocrat
Aristocrat faces a quantity of obstacles to persuading the High Court to by some means overturn the sooner final result, and declare its claims to computer-implemented EGM expertise to be patent-eligible.
First and foremost is the truth that, irrespective of how unsatisfactory the method may need been, the query of whether or not Aristocrat’s main claims are patent-eligible has been lastly decided – within the determination of the Full Court that was ‘affirmed’ underneath s 23(2)(a) of the Judiciary Act. Those claims – at the least insofar as these proceedings are involved – are thus useless and gone, and can’t be revisited in any enchantment.
Aristocrat is constrained in its enchantment to the problems determined within the current judgment of Burley J. That is to say, it could actually search to have the High Court reverse the ruling that the remaining dependent claims are patent-ineligible, however this can not resurrect the claims which have already been lastly dominated invalid. In his determination granting depart to enchantment, O’Bryan J acknowledged that there’s a broader significance in addressing the uncertainty within the legislation that has resulted from the High Court’s cut up determination, ‘the determination of the residual claims in this proceeding is a less than satisfactory vehicle for reconsidering those issues in circumstances where a final determination of [the primary claims] has already been made’ (at [63]). If the High Court sees the matter this manner, then it might be reluctant to take up the case as soon as once more.
Prospects of the High Court Taking the Case Up Again
What makes this case probably of additional curiosity to the High Court isn’t the destiny of Aristocrat’s dependent claims, and even whether or not the choice in relation to its main claims was appropriate. Where the High Court could also be extra inclined to weigh in is on the correct interpretation and utility of s 23(2)(a) of the Judiciary Act. This case presents a novel and distinctive alternative to achieve this. Aristocrat’s proposed grounds of enchantment rely closely on assertions that Burley J erred in contemplating himself sure by the ‘affirmed’ determination of the Full Court, and in declining to establish and apply related rules of legislation that may very well be drawn from the High Court’s cut up determination.
As O’Bryan J put it (at [62]) the case presents ‘unusual circumstances’ during which ‘the decision of the Full Court that was affirmed by operation of [s 23(2)(a)] required the remitter of the matter to the primary judge in light of the reasons of the Full Court and where both judgments of the High Court disagreed with aspects of those reasons.’ The High Court might effectively have an curiosity in whether or not, in such circumstances, the decrease courts ought to have regard to any rules that is perhaps extracted from its opinion(s), or whether or not they need to – as Justice Burley has executed right here – successfully ignore the High Court and contemplate themselves to be wholly sure by the ‘affirmed’ judgment of the Full Court, together with any causes of which the High Court might have disapproved.
Conclusion – We Await the Next Steps!
The finest case state of affairs for Aristocrat would appear to be that the High Court agrees to take away the enchantment to itself, and {that a} majority of the Court then (by some means) take this oblique alternative to overrule the sooner determination of the Full Federal Court, and to discover Aristocrat’s dependent claims to be patent-eligible by another line of reasoning (corresponding to that of Gordon, Edelman and Steward JJ within the cut up determination). This can be useful to Aristocrat past confirming the patentability of its dependent claims. The innovation patents at concern have, in any occasion, already reached the tip of their eight-year most time period and expired. Bit Aristocrat has a quantity of associated normal patent functions nonetheless pending, and will subsequently successfully restore its earlier claims if the Full Court determination now not stood in its approach.
However, if the enchantment is primarily concerning the correct utility of s 23(2)(a) of the Judiciary Act, then the pathway to Aristocrat’s best final result isn’t completely clear to me. Much may depend upon whether or not the High Court accepts that it made one thing of a multitude with its cut up determination within the Aristocrat case and, if that’s the case, whether or not it feels inclined to take this chance to clear up now, or to anticipate a extra appropriate automobile. It is perhaps related that just one of the judges who discovered Aristocrat’s claims to be unpatentable – Justice Gageler – stays on the High Court, though he’s now Chief Justice. All three of the judges who favoured patentability of Aristocrat’s claims stay on the Court. The Court has since joined by Justice Jagot – who’s an skilled patents decide – and Justice Beech-Jones, who’s a former Judge of Appeal of the Supreme Court of NSW, and thus presumably not very skilled with patent legislation. The closing decide of the Court is Justice Gordon, who because the absentee within the earlier listening to would presumably have forged the deciding vote. On the face of it, that would appear to give Aristocrat three alternatives to persuade a fourth decide over to its facet, if it could actually get again in entrance of the High Court.
If the High Court declines to take the enchantment straight, depart has nonetheless been granted, and the enchantment would as an alternative be heard by the Full Federal Court. In this case, I feel it probably {that a} 5 decide panel can be appointed, recognising the likelihood that it is perhaps crucial or fascinating to overrule the sooner determination of three judges. But that Full Court would wish to handle the questions raised by Aristocrat on enchantment, together with the correct utility of s 23(2)(a) of the Judiciary Act, and the way decrease courts ought to deal with opinions of the High Court in these circumstances. The High Court may not need a query concerning its personal authority to be determined for it by a decrease courtroom, and so could also be inclined to weigh in by as soon as once more granting particular depart to enchantment such a choice. So that’s one more avenue by which the case might make its approach again to the High Court.
At this stage, a quantity of paths stay open. It might be attention-grabbing to see which one is taken.