30 November 2022

High Court’s Aristocrat Debacle Leaves Patent Office Practice Unchanged

Batter up Back in August, the High Court of Australia handed down a ‘decision’ on the patent-eligibility, under the ‘manner of manufacture’ test in Australian law, of claims directed to computer-implemented electronic gaming machine (EGM) technology developed by Aristocrat Technologies Australia Pty Ltd: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.  Unfortunately, the Court was evenly split, 3:3, on whether or not Aristocrat’s claims were patentable, resulting in the adverse decision of the Full Federal Court being affirmed on a technicality, despite all six High Court judges having criticised the approach taken by the lower court.  (See High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws for my analysis of the case.)  This left many people scratching their heads trying to work out what effect, if any, the decisions of either the High Court, or the Full Federal Court, might have on the treatment of computer-implemented inventions by lower courts and – more immediately – the Patent Office.

While we are still waiting for a decision in which a single judge of the Federal Court is required to consider whether she or he is bound by anything said by the higher courts in the Aristocrat case, the reaction from IP Australia – following an initial statement that ‘the Commissioner will carefully review the decision and consider its implications’ – has been… silence.  There have been no further statements or other communications.  There have been no updates to the Patent Manual of Practice and Procedure (a.k.a. the Examiners’ Manual).  All indications are that the High Court’s decision has changed nothing.

As further evidence of this, there have now been three hearing decisions on patentable subject matter issued by the Patent Office since the High Court handed down its opinions in Aristocrat.  In all three cases, the inventions described and claimed in the patent applications at issue were struck down as not being patent-eligible, for reasons that would have applied equally prior to the High Court decision.

Strike One

Troy Andison [2022] APO 63 (12 September 2022) concerned a patent application entitled ‘Location-based Collection of Recyclable or Reusable Items’.  Broadly speaking, the claims are directed to a system for picking up recyclables and depositing them at a suitable recycling depot – think Uber, but for the collection of recyclable items.  A user employs an electronic device (e.g. a smart phone with an installed app) to scan details and request collection of recyclable items; the request goes to a remote server which dispatches it to a collector located in the area; and the collector then goes to collect the recyclable items and deposit them at a ‘relocatable receival depot’.  The claims include additional details of data collected and transmitted, and the steps executed by the various electronic devices and servers, but that is the gist of the invention.

At [19], the Hearing Officer in Troy Andison referred to the High Court’s Aristocrat opinions, observing that the Court was evenly split, thus affirming the decision of the Full Federal Court via section 23(2)(a) of the Judiciary Act 1903, while nonetheless appearing to confirm that the ‘advance in computer technology’ test proposed by the Full Court is not a useful test for patentability.  The Hearing Officer also noted that the High Court appeared to confirm that the earlier Full Court decisions relating to patent-eligibility of computer-implemented inventions – Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, and Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 – were correct.

The Hearing Officer found (at [29]-[30]) that the invention uses only ‘generic or standard technology’, that it involves ‘no steps that are foreign to computer function, each of the steps performed by the devices being merely non-descript technologically based manipulation of particular data’, and that ‘there is no ingenuity in the way the individual devices are utilised, and here the technology is simply the means of automation’.  He considered it ‘clear’ that the ‘substance of the invention is a method for arranging and facilitating pickup and drop-off of recyclable items involving a customer/user and a collector who picks up recyclable items from a customer/user and takes them to a relocatable recycling depot that is merely implemented using computing devices that are held by the customer/user and roving collector’, and ‘[g]uided by the decisions of the Full Federal Court, the substance of the invention is clearly a scheme.’  The claimed invention was therefore not for a patent-eligible ‘manner of manufacture’.

Strike Two

Amadeus S.A.S. [2022] APO 76 (28 November 2022) concerned a patent application entitled ‘Undo/redo of database files for modifying re-accommodation’.  (Full disclosure: I have done work for Amadeus in the past, but have no connection to this case.)  The ‘re-accommodation’ in the title refers to the process of modifying travel itineraries to account for schedule changes caused by, e.g., flight schedule changes, routing and equipment changes, and flight delays or cancellations arising from mechanical problems with equipment, crew availability, or weather conditions.  Re-accommodation involves replacing travel segments affected by the schedule changes in the impacted travel itineraries, which ultimately results in changes to the database in which travel itineraries are stored.  The claimed invention addresses circumstances in which it is required (e.g. due to errors) to undo a re-accommodation by modifying the database files to their pre-re-accommodation state, or redo a re-accommodation by modifying the database files to include a different set of replacement segments. 

The patent specification explains that, for a variety of reasons, these operations can be difficult.  The solution provided by the invention is conceptually straightforward: maintain a separate history of changes made to each passenger itinerary record, which can subsequently be used to restore or modify earlier itineraries; and also generate reports for each re-accommodation, tracking all of the impacted segments and passenger itineraries, and recording the changes made to implement the re-accommodation.  In practice, however, the process is complicated by constraints imposed by the established computer reservation systems and the claimed method comprises numerous steps – far too many to reproduce here – that are specific to this operating environment.

Similarly to the Troy Andison case, the Hearing Officer referred (at [42]) to the High Court’s Aristocrat opinions, and observed that because ‘the six judges were evenly divided as to the outcome, there was no majority and no usual binding precedent’, but that the Full Court decisions in Research Affiliates, RPL Central, Encompass and Rokt were not criticised and remain undisturbed.  He proceeded to apply the principles discerned from these decisions much as they have been applied in previous Patent Office decisions to conclude (at [89]) that ‘the problem solved by the instant invention is of non-technical, administrative nature’ and that claimed solution ‘is also administrative and non-technical, and the working of the invention does not produce a technical effect.’  Furthermore, ‘[t]he Specification also does not suggest the presence of any ingenuity in the computer implementation, hence all potential ingenuity is directed to the administrative arrangement, including its abstract data structures.’  As a result, (at [91]): ‘the claimed invention cannot be characterised as a patentable technological innovation’ but rather ‘could be described as an administrative business scheme’ and therefore not a patent-eligible ‘manner of manufacture’.

Strike Three

The Regents of The University of California [2022] APO 77 (29 November 2022) concerned a patent application entitled ‘Enhanced cognition in the presence of distraction and/or interruption’.  The invention relates to a method of arresting or reversing cognitive decline using a computer-implemented cognitive training system.  Broadly speaking, the claimed method involves presenting a user with some cognitive task that requires some user input in response, firstly without any distractions, and then subsequently while also generating distractions (termed ‘interference’ in the claims).  For example, in an implementation described in the specification the task is to drive a virtual car along a virtual road at constant virtual speed, and the ‘interference’ consists of the presentation of irrelevant visual signs.  The difficulty of the task is then adjusted based upon how well (or badly) the user performs when distracted as compared with when no distractions are present.  The method can be used to measure cognitive function, i.e. based upon how heavily influenced the user is by the interference, and to improve cognitive function, i.e. by using the system for ‘brain training’.

The applicant submitted two arguments as to why the claimed invention should be patentable.  Firstly, they argued that the claims are directed to methods of medical diagnosis and treatment, which – they said – have been found to be patentable subject matter by the High Court in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50 (see High Court Rules Methods of Medical Treatment Patent-Eligible).  Secondly, they argued that the use of computer technology to implement the invention also makes it patent-eligible.  On the first point, the Hearing Officer distinguished this case from Apotex, observing (at [49]) that ‘[t]here is no particular medical or physical condition targeted by the present invention, instead the invention seeks to determine and improve cognitive ability in the most general of senses. Alternatively worded, the invention improves the “intelligence” of an individual through focus on a particularly arranged challenge.’

On the question of computer implementation, the High Court’s opinions in Aristocrat were once again mentioned (at [26]), with the Hearing Officer observing (again) that the Court was evenly split, but that it affirmed the correctness of the Full Court decisions in Research Affiliates, RPL Central, Encompass and Rokt.  Applying principles drawn from these decisions, he concluded (at [51]) that ‘the proper characterisation of the present invention is to a mere scheme for enhancing cognition/mental capability of an individual using a difference between an individual’s performance of a task with and without interference and using that difference to adjust the difficulty level of the task before presenting the task with the adjusted difficulty level back to the individual.’  Further, ‘[t]he invention as a matter of substance does not provide for a material advantage in the useful arts … and clearly does not address any identifiable technical problem’ but ‘instead addresses a general problem of cognitive/intellectual decline in an abstract and intangible way.’  It was therefore not a patent-eligible ‘manner of manufacture’.

Conclusion – Business as Usual

For those of us who were wondering whether the High Court’s Aristocrat decision would have any impact on Patent Office practice, it is becoming apparent that the answer is a resounding ‘no’.  The absence of any relevant updates to the Examiners’ Manual was the first indication that it remains ‘business as usual’ on computer-implemented inventions following Aristocrat.  As confirmation, all three of the decisions discussed above treat the High Court’s decision as providing no principles that are binding on the Commissioner of Patents, except to confirm that an ‘advance in computer technology’ is not a useful test for patentability, as might have otherwise been suggested by the Full Federal Court’s (technically ‘affirmed’) decision in the Aristocrat case.

Since the High Court did not disturb any of the earlier Full Court decisions on the patent-eligibility of computer-implemented inventions, IP Australia appears to have taken the (not unreasonable) view that it can simply continue with its existing practices, which it believes to be consistent with those decisions.  At this point, therefore, it seems unlikely that we will see any change until and unless the High Court once again takes up the issue – and, hopefully, manages to deliver a majority ruling.


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