Fate of computer-implemented inventions in the hands of five Federal Court Judges

Date: 2018-11-02
Author: Akanksha Dahiya

An expanded bench of the Federal Court is set to hear a case next week related to the patentability of a computer-implemented invention.  This is the first case being heard by the Full Federal Court after the landmark RPL Central decisionin 2015 and it will be an important case that may well shape Australia’s position on computer-implemented inventions. The significance of the case is reflected in the assignment of five judges (including the chief Justice) to this case, instead of the regular three. 

Background

In March this year, a Federal Court judge considered the issue of subject matter eligibility of a computer implemented invention in Encompass v InfoTrack2 and found that the invention was not directed to subject matter that is eligible for patent protection.

The patent application in issue was directed to the field of information retrieval and data visualization.  In particular, the invention was directed to a process for retrieving information about a particular entity (e.g., organization or person) from multiple remote databases and displaying the results in the form of a network of interconnected nodes.  Users could search for further information related to a particular node by selecting the node.  In the backend, the system would automatically create a search query, query the remote databases, retrieve results and display them to the user.  Claim 1 is reproduced at the end of this article. 

Although the primary judge noted that there is no single test to determine whether the invention is proper subject matter for a patent3 he seemed to rest the entire case on one question – does the invention result in an improvement within the computer (which he considered to be patentable) or merely require generic computer implementation4.

Turning to the particular case in hand, the primary judge concluded that although the disclosed method resulted in the computer being used to do something it has not been used to do before5 and the method combined known features in an innovative way to provide an enhanced experience to a userthe invention did not improve the functionality of the underlying machine in any way. And for that reason he concluded that the invention did not involve a manner of manufacture7.

The Appeal

Encompass appealed this decision in May 2018 and it will be heard on 8 and 9 November this year.  Interestingly, instead of three federal court judges (which is the norm), the case will be heard by an expanded panel of five federal court judges (including the chief justice).

Although it is up to the Federal Court to decide how to run an appeal, it is very rare for the Court to assign a bench of five judges to a case.  This is likely done when the Chief Justice considers a case to involve a significant issue, particularly where the Court wants the Full Court decision of five judges to be given greater weight/precedence over a decision by a single judge or a three-judge panel.        

The Bench

The judges assigned to the case are Chief Justice Allsop, and Justices Besanko, Kenny, Nicholas, and Yates. Over the last few years, these judges have been involved in some very high profile cases dealing with patentable subject matter, including –

Case
Judges involved
Decision
Comments
D’Arcy v Myriad Genetics [2014]8
Chief Justice Allsop, Justice Kenny
Patentable
A 5 judge bench decided whether composition comprising isolated nucleic acid is for a manner of manufacture.  Decided that the invention was directed to patentable subject matter.  This was later overturned by the High Court.    
Research Affiliates v Commissioner of Patents (2014)9
Justice Kenny  and Justice Nicholas
Not patentable
Key case on computer implemented business methods, where the Full court found the invention was not directed to patentable subject matter.  The court decided that the although the claimed method was inventive, it was an abstract idea merely implemented in a standard computer and that no part of the claimed invention resulted in an improvement in what might broadly be called “computer technology”.
Commissioner of Patents v RPL Central (2015)10
 
Justice Kenny  and Justice Nicholas
Not patentable
Key case on computer implemented inventions, where the Full court found the invention was a scheme or business method and not directed to patentable subject matter.  One consideration brought up in this case was whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
Aristocrat v Konami (2007)11
Justice Nicholas
Patentable
Related to a computer-implemented gaming machine.  Nicholas J found that the invention had the threshold level of inventiveness on the face of the specification, produced a new and useful gaming machine and method that produced new and improved results.


Justices Besanko and Yates have not been involved in cases related to patentability of computer implemented inventions, but have decided on a number of cases related to the patentability of chemical/pharmaceutical inventions where they decided whether the inventions in question had the threshold level of inventiveness to be considered manner of manufactures.

Case
Judges involved
Decision
Comments
AstraZeneca v Apotex (2014)12
Justice Besanko, Justice Nicholas, Justice Yates
Patentable
Relates to a method of treatment.  The Court decided whether inventiveness of method of manufacture to be assessed by reference only to what is disclosed on the face of the specification or whether findings on obviousness were relevant to inventiveness in method of manufacture.
DSI Australia v Garford (2013)13
Justice Yates
Patentable
Relates to multi-strandNot a computer implemented case, but decided that threshold level of inventiveness of method of manufacture to be assessed by reference to what is disclosed on the face of the specification


Potential Considerations

In reaching the conclusion that the claimed invention was not directed to patentable subject matter, the primary judge in Encompass relied on the Research Affiliates and RPL Central decisions.  Accordingly, it will be interesting to see if Justices Kenny and Nicholas make any comments on the way the primary judge interpreted these decisions. 

Further, the primary judge raised some questions vis-à-vis a previous Full Federal Court decision regarding patentability of computer implemented inventions – CCOM v Jeijing14.  In CCOM, the Full Federal Court had found an invention related to word processing of Chinese language characters to be directed to patentable subject matter even though it did not involve anything new or unconventional in computer use.  The primary judge in Encompass noted that it was difficult for him to distinguish between the Encompass invention and the CCOM invention15 and it was not clear to him how the invention in CCOM allowed the computer to be used in a more efficient way16. The bench may choose to address this in several ways, including by either criticizing the CCOM decision or providing clarity on the principles from the CCOM decision and their intersection with the Research Affiliates and RPL Central decisions.       

Developments

To make matters more interesting, the Commissioner of Patents has been accepted as an interested party and has made submissions.  The Institute of Patent and Trademark Attorneys (IPTA), a local body of patent attorneys, has also applied for leave to intervene, seemingly in response to the Patent Office’s involvement. 

The case will be heard next week and a decision is not likely before May next year.  As the final decision may have considerable implications for patentability of computer-related inventions in Australia we will continue to watch this case closely and report on its outcome.


Claim 1 of the encompass patent application recites - 

A method of displaying information relating to one or more entities, the method including, in an electronic processing device:
  • generating a network representation by querying remote data sources, the representation including:
  • a number of nodes, each node being indicative of a corresponding entity; and,
  • a number of connections between nodes, the connections being indicative of relationships between the entities; and,
  • causing the network representation to be displayed to a user; and
  • in response to user input commands, determining at least one user selected node corresponding to a user selected entity;
  • determining at least one search to be performed in respective of the corresponding entity associated with the at least one user selected node by:
    • determining an entity type of the at least one user selected entity;
    • displaying a list of available searches in accordance with the entity type;
    • determining selection of at least one of the available searches in accordance with user input commands;
    • performing the at least one search to thereby determine additional information regarding the entity from at least one of a number of remote data sources by generating a search query, the search query being applied to one of the number of remote databases to thereby determine additional information regarding the entity; and
    • causing any additional information to be presented to the user.


1 RPL Central Pty Ltd v Commissioner of Patents [2015] FCAFC 177

2 Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421

3 See Ibid at 191

4 See Ibid at 193

5 See Ibid at 195

6 See Ibid at 196

7  See Ibid at 197

8 D'Arcy v Myriad Genetics Inc [2014] FCAFC 115

9 Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

10 RPL Central Pty Ltd v Commissioner of Patents [2015] FCAFC 177

11 Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735

12 AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99

13 DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132

14 Ccom Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168

15 See Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 at 197

16 See Ibid at 194