The case has a complicated history. For anybody who may just be joining us, or who requires a recap, here is the story so far in a nutshell.
- Way back in 2018, a Delegate of the Commissioner of Patents revoked four innovation patents relating to the implementation of a ‘feature game’ in an EGM (i.e. a secondary, or bonus, game triggered by the occurrence of a defined event in the ‘base’ game of spinning reels) on the basis that the patents did not claim a patent-eligible ‘manner of manufacture’ under Australian law: Aristocrat Technologies Australia Pty Limited [2018] APO 45.
- Aristocrat appealed to the Federal Court where, at first instance, Justice Burley determined that the claims were, in fact, 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 subject matter in Australia: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778. (For more, see Federal Court Finds Computer-Implemented Gaming Machine Patent-Eligible in Australia.) Importantly, this decision was based on consideration of a single claim that the parties agreed was representative of the primary claims in all four innovation patents. The dependent claims of the patents were not considered at all in the judgement.
- The Commissioner of Patents was granted leave to appeal to the Full Federal Court, where all three judges on the panel agreed that the decision of Justice Burley should be overturned, and the matter remitted back for consideration of any residual issues relating to the dependent claims. However, a plurality of two judges (Middleton and Perram JJ) based their decision on a new two step test – first asking whether the claims are for a ‘computer-implemented invention’ and then whether that invention can ‘broadly be described as an advance in computer technology’ – while the third judge (Nicholas J) instead took a more conventional path, observing that the substance of the claimed invention lay in the mere computer 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 more, see Patent-Eligibility of Computer-Implemented Inventions – Appeals Court Says an ‘Advance in Computer Technology’ is Required.)
- The High Court granted Aristocrat special leave to appeal. Unfortunately, on the days of the hearing one judge was absent due to illness and – for whatever reason – the Court decided to proceed with a panel of six judges (which, astute observers will note, is an even number). The panel split 3:3, meaning that, under 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, notwithstanding 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 different grounds. All six judges of the High Court explicitly or implicitly disapproved the novel two step test of patentability proposed by the plurality in the Full Federal Court: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29. (For more, 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 back to Justice Burley for consideration of the ‘residual issues’. In the resulting judgment, his honour determined that the effect of section 23(2)(a) of the Judiciary Act is plainly that the Full Court decision is ‘affirmed’, that he was bound, as a single judge of the court, by that decision, and that he should not therefore have any regard to the reasoning of the High Court in reaching his decision. As a result, Burley J found all of the remaining claims to be unpatentable under the plurality’s two step test: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212.
Aristocrat sought leave to appeal this further decision of Burley J. Section 25(2) of the Federal Court of Australia Act 1976 stipulates that applications for leave to appeal must be heard and determined by a single judge unless a judge directs that the application be heard and determined by a Full Court – which happens quite often in cases such as this, including in Aristocrat’s appeal from Justice Burley’s original decision. On this occasion, however, Aristocrat expressly sought that the application for leave be determined by a single judge, separately and before the hearing of any appeal. This preserves its option to have the appeal removed directly to the High Court under s 40(2) of the Judiciary Act.
With leave having now been granted by O’Bryan J in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2024] FCA 987, it seems reasonable to assume that Aristocrat will now apply to have the High Court take up the case directly. But for those who may be hoping that this is a short-cut to having the Court resolve the impasse it reached in 2022, I regret that matters may not be quite so simple.
Challenges for Aristocrat
Aristocrat faces a number of obstacles to persuading the High Court to somehow overturn the earlier outcome, and declare its claims to computer-implemented EGM technology to be patent-eligible.
First and foremost is the fact that, no matter how unsatisfactory the process might have been, the question of whether Aristocrat’s primary claims are patent-eligible has been finally determined – in the decision of the Full Court that was ‘affirmed’ under s 23(2)(a) of the Judiciary Act. Those claims – at least insofar as these proceedings are concerned – are thus dead and gone, and cannot be revisited in any appeal.
Aristocrat is constrained in its appeal to the issues decided in the recent judgment of Burley J. That is to say, it can seek to have the High Court reverse the ruling that the remaining dependent claims are patent-ineligible, but this cannot resurrect the claims that have already been finally ruled invalid. In his decision granting leave to appeal, O’Bryan J acknowledged that there is a broader significance in addressing the uncertainty in the law that has resulted from the High Court’s split decision, ‘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 way, then it may be reluctant to take up the case once again.
Prospects of the High Court Taking the Case Up Again
What makes this case potentially of further interest to the High Court is not the fate of Aristocrat’s dependent claims, or even whether the decision in relation to its primary claims was correct. Where the High Court may be more inclined to weigh in is on the proper interpretation and application of s 23(2)(a) of the Judiciary Act. This case presents a novel and unique opportunity to do so. Aristocrat’s proposed grounds of appeal rely heavily on assertions that Burley J erred in considering himself bound by the ‘affirmed’ decision of the Full Court, and in declining to identify and apply relevant principles of law that could be drawn from the High Court’s split decision.
As O’Bryan J put it (at [62]) the case presents ‘unusual circumstances’ in 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 may well have an interest in whether, in such circumstances, the lower courts should have regard to any principles that might be extracted from its opinion(s), or whether they should – as Justice Burley has done here – effectively ignore the High Court and consider themselves to be wholly bound by the ‘affirmed’ judgment of the Full Court, including any reasons of which the High Court may have disapproved.
Conclusion – We Await the Next Steps!
The best case scenario for Aristocrat would seem to be that the High Court agrees to remove the appeal to itself, and that a majority of the Court then (somehow) take this indirect opportunity to overrule the earlier decision of the Full Federal Court, and to find Aristocrat’s dependent claims to be patent-eligible by some other line of reasoning (such as that of Gordon, Edelman and Steward JJ in the split decision). This would be beneficial to Aristocrat beyond confirming the patentability of its dependent claims. The innovation patents at issue have, in any event, already reached the end of their eight-year maximum term and expired. Bit Aristocrat has a number of related standard patent applications still pending, and could therefore effectively restore its earlier claims if the Full Court decision no longer stood in its way.
However, if the appeal is primarily about the proper application of s 23(2)(a) of the Judiciary Act, then the pathway to Aristocrat’s ideal outcome is not entirely clear to me. Much might depend on whether the High Court accepts that it made something of a mess with its split decision in the Aristocrat case and, if so, whether it feels inclined to take this opportunity to clean up now, or to wait for a more suitable vehicle. It might be relevant that only one of the judges who found Aristocrat’s claims to be unpatentable – Justice Gageler – remains on the High Court, although he is now Chief Justice. All three of the judges who favoured patentability of Aristocrat’s claims remain on the Court. The Court has since joined by Justice Jagot – who is an experienced patents judge – and Justice Beech-Jones, who is a former Judge of Appeal of the Supreme Court of NSW, and thus presumably not very experienced with patent law. The final judge of the Court is Justice Gleeson, who as the absentee in the earlier hearing would presumably have cast the deciding vote. On the face of it, that would seem to give Aristocrat three opportunities to persuade a fourth judge over to its side, if it can get back in front of the High Court.
If the High Court declines to take the appeal directly, leave has nonetheless been granted, and the appeal would instead be heard by the Full Federal Court. In this case, I think it likely that a five judge panel would be appointed, recognising the possibility that it might be necessary or desirable to overrule the earlier decision of three judges. But that Full Court would need to address the questions raised by Aristocrat on appeal, including the proper application of s 23(2)(a) of the Judiciary Act, and how lower courts should treat opinions of the High Court in these circumstances. The High Court might not want a question regarding its own authority to be decided for it by a lower court, and so may be inclined to weigh in by once again granting special leave to appeal such a decision. So that is yet another avenue by which the case may make its way back to the High Court.
At this stage, a number of paths remain open. It will be interesting to see which one is taken.
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