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Australia – Dynamite’s Full Court Gamble Fails For Obviousness.

17 December, 2013

 


Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCAFC 96

What You Need To Know


  • The Full Court has dismissed Dynamite’s appeal, confirming that its standard and innovation patents did not involve an inventive and innovative step, respectively.
  • The decision is a concerning development for the gaming industry because the Full Court effectively found that a would-be revoker of a patent in the field of gaming design does not have to prove the “reasonable expectation of success” limb of the test for inventive step.
  • It will be important to see if future decisions confine this case to its facts.

 

What You Need To Do


  • In light of the approach to inventive step in this case, you may wish to review patents over gaming design relevant to your commercial activities as these may be more vulnerable to attack.
  • It is also a good time to review the approach to drafting patent specifications in the gaming industry to ensure that they highlight the inventive or innovative step over the prior art and do not impliedly acknowledge an expectation of success.

In this decision, the Full Court dismissed Dynamite Games Pty Ltd’s (Dynamite) appeal from Justice Emmett’s first instance decision. Dynamite’s appeal was confined to inventive and innovative step issues. This is a concerning development for the gaming industry, in which small variations in game design can be critical to the success of a game.


Dynamite’s Patents


The patents in question were a standard patent and an innovation patent. The claimed invention of both patents was for “gaming apparatus and systems”. Broadly, the inventive concept of the patents was:


  • guaranteeing the triggering of game events where they have not occurred within a set amount of gameplay;
  • indicating the amount of gameplay remaining before the guaranteed game event is triggered; and
  • resetting indicators following the triggering of the guaranteed game event.

 

Appropriate To Ask If It Was Obvious To Try The Standard Patent?


Dynamite’s chief complaint concerning the standard patent was that Justice Emmett adopted an “obvious to try” approach to inventive step that the High Court had expressly disapproved in Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411 (Alphapharm). In Alphapharm, the High Court approved the reformulated Cripps question, which, in simple terms, asks whether the skilled addressee would directly be led as a matter of course to try the claimed invention in the reasonable expectation of success.


Justice Emmett reasoned that this reformulated Cripps question was “somewhat inapt in the case of the design of a gaming machine” and said that the question in the present case was better formulated as “whether the event guarantee component described in the Specification and Claim 1 was obvious to try in order to produce an enhancement of gameplay interest” (emphasis added).


The Full Court approved the test Justice Emmett applied on two main bases. First, “the primary judge was using ‘obvious to try’ as convenient shorthand for the lengthier ‘directly be led as a matter of course’”. Secondly, the Full Court explained:


“the primary judge was doing no more than making the point, which operates in Dynamite’s favour, that the entire discourse in the authorities about the need for an expectation of a useful result is beside the point. A game designer never has to worry that the selected feature might not be able to be implemented or, if implemented, might not result in the desired effect.”


In the context of an inventive step inquiry, it is difficult to understand how dispensing with the “reasonable expectation of success” limb of the reformulated Cripps question “operates in Dynamite’s favour”. The effect of this decision is that, for gaming design related patents, the patent challenger only need prove that the skilled addressee would “directly be led as a matter of course to try” and does not also need to prove that they would be so led in the reasonable expectation of success.


Conventional Approach To Innovative Step?


Dynamite’s complaint concerning the innovation patent was that Justice Emmett determined the issue of innovative step in an “evidentiary vacuum” without reasoned analysis. Although the Full Court found that Justice Emmett applied the correct test “in conventional terms”, the first instance decision does not precisely identify differences between the invention as claimed and the prior art. For example, in respect of claim 1, Justice Emmett found, it “does not appear to vary from the prior art” (emphasis added). A more certain finding would have been that claim 1 did not vary from the prior art at all.


Conclusion


Whatever the linguistic issues with the Court’s approach to inventive and innovative step, ultimately Dynamite was unable to overcome the primary Judge’s findings on the evidence that the integers of the claims of the patents, including the combination of integers, were part of the common general knowledge.


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For further information, please contact:

 

Ben Hopper, Ashurst

[email protected]


Grant Fisher, Partner, Ashurst

[email protected]

 

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