Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163

The Federal Court has held that two patents claiming the invention of “gaming apparatus and systems” were not patentable within the meaning of s 18 of the Patents Act 1990 (Cth) (the Act) because there was no inventive step or innovative step involved. 

The applicant, Dynamite Games Pty Limited (Dynamite) holders of the Standard Patent and the Innovation Patent (together, the Patents), claimed that the first respondent, Aruze Gaming Australia Pty Limited (Aruze Australia), and the second respondent, Aruze Gaming America, Inc (Aruze America), infringed both Patents and were threatening to continue to do so.  Aruze Australia and Aruze America (together, Aruze) denied any infringement and also filed a cross-claim seeking revocation of both of the Patents on a number of grounds including lack of inventive or innovative step.

The Claimant’s Arguments:

While Dynamite acknowledged that an idea could not be patented, it argued that an idea that is the main part of the inventive step of the claimed invention, in this case, the idea of providing a number of novel ways of maintaining player interest satisfied the criteria.  Dynamite maintained that it is not simply the idea that is described and claimed in the Patents, but a gaming apparatus having specific components by which that idea will be implemented that constituted the inventive step.

The Cross-Claim

Aruze contended, on the other hand, that the Innovation Patent did not teach the relevant skilled addressee how to implement the claimed invention.  They explained that in modern electronic gaming machines, features of the claimed type are characteristically implemented in the software that runs the games. 

"The skilled addressee must be assumed, as a matter of common general knowledge, to be able to, or to have access to programmers who can, write source code to give effect to such features.  Thus, the claimed invention was essentially no more than a concept." 

Accordingly, Aruze asserted, the claims of both of the Patents amounted a mere idea as to the rules of a game.  Neither of the Patents suggested that the claimed invention lies in the use of a specific computer program to generate an anticipated result. Instead, it could be said that the Patents give no suggestion of how the idea is to be implemented.  

“An absence of any teaching as to how to implement the claimed invention might suggest that the claims of the Patents merely describe the use of known products, being gaming machines and their components, gaming systems and gaming software, for which their known properties make them suitable, namely, implementing the rules of the game (Commissioner of Patents v Microcell Limited (1959) 102 CLR 232).”

The Decision

The court held that the infringement claim failed and upheld the cross-claimants’ assertion that the Patents should be revoked because they did not involve any inventive step.  Emmett J held that the claims of the Standard Patent "merely represented the application of existing ideas and that the claims of the Innovation Patent did not vary from the prior art in any way that made a substantial contribution to the working of the claimed invention." The elements of the claims of both Patents were all matters of common general knowledge and thus, the claimed invention of the Patents did not satisfy the requirement for an inventive step or an innovative step.

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