Neurizon Pty Ltd v Jupiters Limited

1. Pursuant to section 105 of the Patents Act 1990 (Cth), I direct the Commissioner of Patents to amend Australian Patent Number 714299 according to the marked-up version marked 'A' and attached to the Notice of Motion filed on 4 July 2005. 2. The applicants pay the respondents' costs of the motion.
2. The cross-claim for revocation of Patent No 714299 be dismissed.
3. The cross-applicants pay the cross-respondents' costs of the cross-claim. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT 1 The cross-claim for revocation of the patent in these proceedings has been remitted by a Full Court (Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90) for determination of the issue of lack of inventive merit and the costs of the cross-claim. I do not propose to set out the background facts. They appear in my judgment (Neurizon Pty Ltd v Jupiters Ltd (2004) 62 IPR 569; [2004] FCA 1012). 2 In December 2004 Neurizon assigned the patent to Sakura Industries Limited. The assignment did not include any rights arising from these proceedings. It has been joined as a party to the proceedings, in particular for the purpose of a further application which is now made. 3 Orders are sought amending the patent. This follows upon a finding of the Full Court that Jupiter's ActivData II+ system anticipated the Neurizon invention. Jupiters failed on the issue of novelty because it had not established an enabling public disclosure was made in the implementation of ActivData II+. 4 It is convenient to refer to the application for amendment first, although the outcome of the cross-claim for revocation may be finally determinative of it. 5 Claim 1 of the patent is presently in these terms: '1. A method of awarding a prize in a gaming system comprising at least one electronic gaming machine, characterised in that the probability of each electronic gaming machine winning the prize is dependant upon at least some of the amount wagered on that electronic gaming machine during an elapsed period.' (emphasis added) 6 Mr Steven Johnson, the inventor, says that at the time of the preparation of the specification and claims of the patent, in about August 1999, he raised with the patent attorney whether it was necessary to limit the reference to 'that gaming machine' so that it was clear that only one EGM was spoken of. He thought that it might be possible to read the claim as involving a relative contest between EGMs He was advised that additional words would be redundant and that the claims were clear. He took that advice. 7 Jupiters submitted that Neurizon should have applied to amend the patent during the earlier proceedings on the patent heard by Dowsett J (Neurizon Pty Ltd v LTH Consulting and Marketing Services Pty Ltd (2002) 58 IPR 93) ('the Golden Casket proceedings'). Neurizon's solicitor says that consideration was given to a voluntary amendment to the patent to remove any possible argument that the patent intended to claim a monopoly in a method of awarding a prize where the amount wagered on any gaming machine in the elapsed period other than the particular gaming machine in question had any effect on the probability of the particular gaming machine winning the jackpot prize. He denies however that either he or anyone connected with Neurizon believed it was necessary to do so at any time until recently. He forwarded a letter to the respondents in those proceedings foreshadowing the application and wrote to the Commissioner of Patents. The application was not proceeded with, as the evidence led by the respondents in particular as to the meaning of the phrase 'that gaming machine' agreed with Neurizon's interpretation. That view was vindicated by the findings of Dowsett J (at [76]). His Honour did subsequently make some amendments to the patent, arising out of observations made in his reasons, but these amendments were not pursued. 8 Jupiters submitted that Neurizon should have applied for amendment before bringing these proceedings, or at least when it appreciated Jupiters was taking a different viewpoint. It must be recalled however that Neurizon had a decision in its favour on this very point. There was no basis to doubt its correctness. I took a like approach in my reasons and rejected Jupiters' submission in connexion with ActivData II+ that the reference to 'that EGM' in claim 1 does not necessarily exclude other EGMs. I held that there was no suggestion of any other machine being involved in the probability calculation (at [138]). The Full Court in its judgment handed down on 23 May 2005 however held that a relative contest was not excluded by the words of the claim. In particular the evidence of Mr Kopff and Dr Pollett gave meaning to the claim, impermissibly, by reference to the specification. 9 It is clearly the Full Courts' decision which has led to the application for amendment to claims 1 and 17 and elsewhere. Where the words 'is dependent upon at least some of the amount wagered on that electronic gaming machine during an elapsed period' appear it is sought to add the words 'and is not affected by the amount wagered on any other electronic gaming machine during the elapsed period'. 10 The Commissioner of Patents has advised that the amendments prima facie comply with s 102 of the Patents Act 1990 (Cth) ('the Act') and did not seek to be heard on the application. Jupiters, in submissions in reply, raised the question whether s 102(1) applies. That subsection provides: '(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.' 11 In its submission the specification does not directly state that exclusion of a relative contest is an inventive step. If the limitation is added to claim 1 by amendment, it would not be fairly based. 12 A statement that something is an inventive step is not necessary to be made. The question falls to be resolved by reference to the specification read as a whole. Both Mr Gregory and Mr Kopff gave evidence that the specification taught against a relative contest. The description of the preferred embodiments show that only turnover on a single EGM is envisaged. 13 In Novartis AG v Bausch & Lomb (Australia) Pty Ltd (2004) 62 IPR 71; [2004] FCA 835 Merkel J considered the cases dealing with validating amendments of a patent, the approach there taken requires more than the more lenient approach which is taken merely to correct errors or mistakes or mere ambiguities (at [66]-[68]). In particular, his Honour referred to the principles enumerated in Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 at 569 which govern the exercise of the discretion to amend. The onus is upon the patentee. Full disclosure must be made of all relevant matters. The amendments must be those permitted under the Act. It must be borne in mind that there is a public interest that amendments be sought promptly. Delays for an unreasonable period will result in refusal unless reasonable grounds are shown for the delay. This would include their reasonable belief that amendment was not necessary. A patentee who seeks to obtain an unfair advantage will not be permitted to amend. The Court is concerned with the conduct of the patentee, not the merits of the invention. 14 Jupiters suggested that there may not have been full disclosure in the present case. Although not obliged to do so, privilege is often waived to enable such disclosure and is a matter which the Court may take into account in exercising its discretion: Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (1997) 40 IPR 110 at 115; Coory v Amcor Packaging (New Zealand) Ltd (2004) 62 IPR 446. Privilege has been waived with respect to the documents made by the patent attorney acting at the time of the preparation of the patent and who advised Mr Johnson against amendment. It is not apparent to me that there should be other documents. Little would need to have been said after reading the reasons of the Full Court. The reason for the decision to amend is apparent. Neurizon's solicitor said that upon a review of the Full Court's decision he made that recommendation. 15 The application is brought in order to prevent possible future revocation proceedings and in order for Neurizon to meet Jupiters' cross-claim. It is brought about solely by the Full Court judgment and in circumstances where Jupiters have known what interpretation Neurizon have placed upon the claims. There is no basis for a conclusion that Neurizon covetously held onto a wider claim. In these circumstances it does not seem to me that any unfair advantage is being gained by Neurizon. It is seeking to be put into a position to complete the second of a series of infringement cases, which it has consistently conducted on the basis that the patent did not involve a calculation of probability on more than one EGM. 16 There is of course the public interest in amendments being made soon and wide claims being narrowed. In the latter respect it is not suggested that Neurizon has ever brought or threatened proceedings for infringement on the basis of the wide claim involving more than one EGM. And, as I have said, it is also important that litigation be taken to its conclusion on the basis upon which the parties had litigated it. 17 This is an unusual case, one involving considerable delay. But in my view until the decision of the Full Court was given it could not have been said that Neurizon and its advisors should have applied for amendment. None of them believed it was necessary. Mr Johnson's initial concern was, I accept, allayed by his patent attorney. His view in turn was apparently shared by two judges. Even if reconsideration was given to amendment in the course of the Golden Casket proceedings, Neurizon was again confirmed in the correctness of its approach by the respondents to those proceedings. 18 Jupiters also submits that had the amendment been made before these proceedings were brought, time and expense would have been saved with respect to the construction of the words 'that EGM' in the claims. It must be borne in mind however that that argument was associated with Jupiters case on novelty by reference to the ActivData II+ system, upon which it ultimately failed. In any event the unfair advantage should arise from the making of the amendment. A failure to amend is properly dealt with in connexion with delay. 19 I would therefore be disposed to grant the amendments, but it is necessary to first consider the remaining issue on the cross-claim, since there may be a question as to the utility of the amendment. 20 In my reasons for judgment, in relation to the issue of obviousness, I rejected the evidence of Mr Gregory and Mr Krimmer. One basis for doing so was my view that they were not skilled addressees. There was another independent witness called for Jupiters. I dealt with his evidence as follows: '156. The first problem identified for Mr Spencer was the collection of data from EGMs, which cannot be synchronised with each EGM's game cycle, the problem being latency in the communications system. In some cases there could be six games played between data collections. If the controller collected credits bet information for the purpose of centrally determining the random event based on credits bet on each game there would be a real likelihood that many played games would be issued. They would be contributing to the jackpot pool with no chance of a win. 157. Mr Spencer considered that the problem of the speed at which individual game data was collected by a central controller could be overcome by accumulating credits for any games played between data collection events and incrementing the jackpot pool based on the aggregate bet amount since the last increment for that EGM. The method of incrementing the jackpot pool is based on adding a proportion of the amounts bet to the jackpot pool, not the number of games played. 158. The second problem identified was a system, namely the Frankovic system, which is deterministic in the sense that the probability of an EGM winning increases as the pool increases towards its predetermined maximum limit. Mr Spencer's solution was to use a random algorithm to trigger jackpots based on time of day or X minutes since the last trigger. It would also be possible to base jackpot values to be awarded on one day as a proportion of total turnover on a previous day or period. It would not be necessary then to use a fixed jackpot maximum value. 159. The third problem was where a player has multiple wagers and the probability of a win is no longer proportional to the wager. His solution would be to implement a trigger mechanism in a remote jackpot controller whereby inputs from multiple EGMs would be compared against a random trigger value and jackpot prizes would be awarded when the trigger condition has been met. He goes on: "To overcome problems with network latency in this solution, I would enhance my earlier solution of aggregating bet amounts between inputs into the jackpot controller and require the jackpot controller to receive from the EGD the total amount of bets and the total number of games played since the last input into the jackpot controller. The controller would then calculate the average bet per play and use this to assess whether or not the trigger had been satisfied." 160. Mr Spencer's solution is based upon the average amount wagered on each game. The amount wagered between the time when information is received by the jackpot controller is aggregated. The EGM informs the controller of the total amount of bets and the total amount of games played and the average amount wagered on each game is calculated. That average is then used to determine the probability of a win. The average amount bet might be compared against a trigger value. His solution might involve a comparison between EGMs of the amount bet, but it might also be applied to each EGM. 161. It is possible to identify in Mr Spencer's solution a period which has elapsed, given that it is concerned with the amount wagered in the time between information or 'inputs' to the jackpot controller. He would fix it by time and does not contemplate the period being fixed by events. Mr Spencer's solution does not however use the amount wagered in that elapsed period in the probability calculation. His solution takes the average amount wagered on each game to influence the probability of an EGM winning. This would appear to be a game-based solution. It does not have the characteristics of the Neurizon patent.' 21 In the Full Court it was held that the evidence of Mr Gregory and Mr Krimmer should not have been rejected on account of them not being skilled addressees. Further, their Honours did not consider that it was apparent that Mr Spencer's system was game-based. Their Honours said: '152. With great respect to the primary judge, the last four sentences of par 161 are not easy to follow given what preceded them. It may be correct to say that the Spencer solution takes the average amount wagered on each game on an EGM to influence the probability of an EGM winning. In this sense, but only in this sense, can it be said to focus on a game not on an elapsed period of time. However, one cannot conclude from that that the Spencer solution is, and is only, a game based solution. The average amount wagered on a game on a particular EGM is itself computed by reference to the amount wagered on that EGM in an elapsed period of time. In consequence using the average amount wagered on a game to influence the probability of the EGM winning necessarily makes that probability dependent, amongst other things, upon at least some of the amount wagered on that gaming machine in an elapsed period of time. 153. Counsel for Neurizon was unable to point to any evidence upon which her Honour's conclusion could have been reasonably based. Rather, a full-scale attack was mounted upon the evidence given by Spencer, including the probative value of the general hypothetical approach taken, flaws in the brief given to him, the relevance of the questions asked of him and the relevance of the answers given. Those submissions are misplaced. There was no objection taken to the evidence at trial and none of the criticisms advanced were put to the witness or advanced during final address. The primary judge's conclusion was not based upon any of those arguments. There was no fundamental flaw relating to the evidence and certainly none that could not have been cured at trial. The methodology has been used in other cases. That is not to say that the evidence given by Spencer is necessarily decisive of the issue or is not to be subject to critical examination within permissible limits. A proper assessment of the effect of that evidence properly understood in the light of all of the evidence is required. It is not appropriate for such an assessment to be done by a Full Court. The finding on obviousness must be set aside and the matter returned for a new trial on that point, limited to the evidence which was led at the trial. 154. Although other grounds of appeal relevant to this issue were not pursued, the rejection of the relevance of the evidence of Krimmer and Gregory on the basis that they were not "skilled addressees at the priority date" may require reconsideration on the remitter. The actual findings as to lack of qualification appear to have been made in relation to assistance in construction of the patent. That in itself is a somewhat controversial issue. It does not give rise to the same issue as obviousness. Section 7(2) of the Act refers to the hypothetical person "skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim". That person is wholly hypothetical. Much evidence is admissible from persons none of whom would precisely answer the statutory description. Some may be more skilled in the relevant art than others. Some may be skilled and inventive; some may be brilliant; some may be plodders; some may be aware of particular pieces of art claimed to be part of the common general knowledge and others not. It is for the Court, having admitted relevant evidence, to come to a conclusion as to the application of the section. It appears that the view was taken that Gregory and Krimmer were not skilled or knowledgeable enough. That would not be a ground for rejecting the relevance of their evidence. Indeed, it may make their evidence very powerful if it were accepted that they did or would have come across the invention. The usual problem in cases of this sort is the over-qualified expert. It is not necessary or appropriate that any final view be expressed about this as the matter was not ultimately pursued in oral submissions.' 22 It is accepted by Neurizon that it does not follow from my findings on Mr Spencer's evidence that his system was game-based. It accepted that it can be said to infringe claim 1, but contends that it does not provide an answer to obviousness. 23 Section 7(2) of the Act provides: 'Inventive step (2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).' 24 The provision dealing with inventive step in the 1952 Act referred to the invention 'as claimed'. It does not seem to me that s 7(2) has a different meaning. 25 The test propounded as relevant to whether an invention is obvious in Aktiebolaget Hässle v Alphapharm P/Limited (2002) 212 CLR 411 ('Aktiebolaget Hässle') has been referred to by me in my previous reasons. That case also reiterates warnings about the use of hindsight in this process (at p 423 [21]). 26 Jupiters seek to rely upon the Full Court's findings concerning ActivData II+ in connexion with obviousness. They say that the findings that it reverse infringed the Neurizon patent is evidence of the solution being reached before the priority date. The ActivData II+ system did not however form part of the common general knowledge at the priority date. It is difficult to see another basis for its relevance on the question of obviousness. Neither Mr Krimmer nor Mr Gregory was in a position to give evidence about the process by which the ActivData II+ system was derived, the paths taken and problems solved. It was largely in place when they arrived. Mr Johnson was the author of the system and he denied there was any inventive step involved, but rather that it resulted incrementally. Such evidence is traditionally not given much weight by the Courts. But that does not improve Jupiters' position. There is insufficient evidence about the process by which it was derived to make evidence about the ActivData II+ system relevant. 27 I have previously given reasons as to why I would not rely upon the evidence of Mr Krimmer and Mr Gregory on the issue of obviousness. It was not only because of their lack of skill, as I perceived it, but additionally because their evidence had been developed with hindsight and amounted to reconstruction. At an earlier point in my reasons I had pointed to their apparent lack of independence. This showed itself in the nature and style of the evidence filed on behalf of their employer. In consequence I dealt with their evidence shortly. My view has not altered. I do not consider their evidence to be reliable on this issue. I have dealt with the evidence of Mr Miller, and dismissed it as an ineffective reconstruction. I do not propose to reconsider that evidence again. 28 The remaining evidence on obviousness is that of Mr Kopff and Mr Spencer. Mr Kopff identifies the characteristics of the prior art patents as being deterministic, involving relative contests and effecting a variation of an EGM's chances by the amount of the current wager, not the amount wagered over an elapsed period. There is other evidence that the industry was at the relevant date focussed upon game-based solutions, from which Neurizon would have one infer that it was not at all likely that the hypothetical person would be led directly as a matter of course to pursue a time-based solution. Mr Kopff himself did not address this issue further. He said in evidence that he was conscious of the problems of hindsight. He did however have some criticisms of Mr Spencer's evidence. 29 The onus of establishing obviousness, or lack of inventive step, is of course upon the respondents. The question which arises is whether Mr Spencer's evidence satisfies that onus and permits an answer to the question posed in Aktiebolget Hässle. 30 In my earlier reasons I identified what I thought to be a fundamental gap in Mr Spencer's solution. As a result I did not further consider his evidence, nor the criticisms made of it, in order to determine whether it established obviousness. I have now had additional submissions on these questions. 31 Neurizon sought to attack the method used to obtain Mr Spencer's solution. A series of questions were put by Jupiter's solicitors for his consideration. I do not see any vice in the method used. The questions put forward for his consideration were problems identified in the patent itself. This was not done in any way which might suggest an outcome. If this be Neurizon's contention, then it has not shown how this was effected. 32 Neurizon also pointed to materials identified by Mr Spencer as amongst those to which he had regard. He said in his affidavit: '17 I have developed this solution to the problem based on common general knowledge in the industry as at 9 August 1999, such as: (a) Approval given to Crown Casino by the Victorian Casino and Gaming Authority in relation to the treatment of jackpot increments and delayed turnover for gaming machine jackpots operating at Crown Casino; (b) The operation of the Mikohn Jackpot Controller approved for use in gaming jurisdictions in Australia, New Zealand, Europe and the United States of America; and (c) Methods for the accounting and reconciliation of jackpot increments and jackpot payments for gaming machines as approved by gaming regulators in jurisdictions such as Victoria, New South Wales, Tasmania and New Zealand;' 33 Neurizon also points to the fact that the IGT patent was given to Mr Spencer. None of these documents are shown to have been part of the common general knowledge at the relevant date. The IGT patent was in evidence and it may be possible to ascertain whether it influenced his outcomes. No one points to such a result, but then again his evidence is very short. The other materials are not in evidence. It is not possible to say what use Mr Spencer has made of them, although he singles them out, which might suggest that he attached some importance to them. 34 Neurizon make a further general complaint about Mr Spencer's evidence. It is submitted that too little is disclosed by him as to the process he undertook, and by which he came to his specific solutions. He merely provides his conclusion. It is not possible to discern from the report whether he considered a number of other solutions before taking the course he did. In these circumstances I shall set out his written evidence: 'First Problem to be Considered 3. The first problem I am briefed to address is stated in the brief as follows: "An electronic gaming device ("EGD"), such as a poker machine, provides its player with the opportunity to win cash or other prizes. To entice more persons to play EGDs and/or to render them more exciting, it is known to link EGDs electronically in a network, with each EGD contributing a proportion of its turnover to a pooled jackpot." … "[A] communications-based Central Feature Game Controller ("CFGC") may theoretically be employed which has a means of determining and testing for [a random "win" event] per game on behalf of each EGD, based on the credits bet on each game." "Many jurisdictions have mandated the useof specialised communications networks designed to collect EGD data and to provide a means of external control over those EGDs. Some operators of those networks have implemented their own jackpot awarding systems utilising these networks. These networks however, cannot guarantee that each EGD's data will be collected in synchronisation with each EGD's game cycle. Further, many of these communications networks do not even support the collection of "credits bet" data from EGDs. In some cases there may be over 6 games played between data collections. If a [Central Feature Game Controller] utilised these networks for the collection of the credits bet information for the purpose of centrally determining the random event based on credits bet on each game, there would be a real likelihood that many played games would be missed due to the data collection later of the communications systems. This would result in those games still contributing to the jackpot pool but with no chance of winning the prize. This makes it impractical to use credits be game as a basis for determination of the random event on a game-by-game basis in a [Central Feature Game Controller] acting on behalf of each EGD." 4. If the problem of the speed at which individual game data was collected by a Central Feature Game Controller did exist, then a solution which would overcome this problem would be to accumulate credits for any games played between data collection events and increment the jackpot pool based on the aggregate bet amount since the last increment for that EGD. The accumulation could take place in the EGD or at intermediate points in the data collection network. 5. Triggering of the jackpot would be unchanged. In other words the trigger process would be based on the same random event concept in that the accumulated credits received from the game would be scaled by the jackpot increment rate and added to the jackpot pool. If the jackpot pool value then matched the random win event value, the machine from which the accumulated credits were received would be declared to be the winning machine for that jackpot. 6. The jackpot pool incrementation method as described is based on adding a proportion of the amounts betto the jackpot pool - not the number of games played. Whether or not or a jackpot pool is incremented as a result of an individual game play or multiple games does not alter the probability of triggering the jackpot, does not impede player fairness,does not alter the overall percentage return to player for EGD's connected to that linked jackpot arrangement and does not effect revenue calculation formula. Second Problem to be considered 7. The second problem I am briefed to address is stated in the brief as follows: "Another type of jackpot system is described in Australian patent 655801. Inthis type of jackpot system, one or more EGD's are typically connected to an external Random Jackpot Controller (RJC) via a data network. As each game is played, the RJC adds a proportion of each wager to the external pool. The RJC initially seeds the pool with a starting value. The RJC then selects a random number between the starting value and a predetermined maximum value. As each EGD is played, each EGD informs the RJC of the credits bet and a proportion of the wager is added to the pool. The value of the pool is then compared with the selected random number. If there is a match, the RJC awards the current pool value to that EGD. This arrangement is usually configured to provide relatively small but frequent awards, and has the inherent characteristic that the probability of a win on each EGD increases as the pool increases toward the maximum limit. "However, since the win probability increases as the pool increases towards its predetermined maximum limit, a player playing just after the pool is reset has a lower jackpot win probability than a player playing at a later time when the pool is greater, even though both players may be wagering the same amount. For this reason, this arrangement is generally considered unfair and deterministic. The deterministic nature of this jackpot system has led some gaming authorities to prohibit the inclusion of the pool contributions into the "Return to Player Percentage" (RTP) for taxation calculation purposes, which diminishes the financial appeal of this jackpot system to gaming machine operators." 8. The solution I described previously in this Affidavit to overcome problems with latency in pool incrementation could also be applied as a remedy to problems with games communicating to a Random Jackpot Controller across a data network. 9. To overcome perceived problems associated with the deterministic nature of the jackpot system as described, a solution would be to change the characteristic of the selection of the jackpot `trigger value' and jackpot range. This could entail using a random algorithm to trigger jackpots based on time of day or X minutes since the last trigger or X games since the last trigger. It is also possible to base the jackpot values to be awarded on one day as a proportion of total turnover on a previous day or period. 10. In these solutions it would no longer be necessary to use a fixed jackpot pool range and this eliminates the deterministic characteristic of the jackpot system through removal of the fixed jackpot maximum value. Third Problem to be Considered 11. The third problem I am briefed to address is stated in the brief as follows: "In a typical progressive linked jackpot system, one or more of the EGDs contribute a percentage of turnover to a pool (either on a local or external network). Each time an EGD is played, it tests. for a particular winning combination. If that combination is achieved, the EGD is awarded the pool. A key aspect of this arrangement is that each game played has the same probability of a jackpot win." "This arrangement has traditionally been used by casinos but its popularity is diminishing due to the introduction of EGDs featuring multiple line and multiple credits per line wagering options. If a player elects to play multiple credits per line, the win probability would no longer be proportional to the wager. That is, the win probability would be the same regardless of the number of credits wagered on the line. This is considered a major disincentive to wagering multiple credits per line." 12. To overcome the problem of disincentive to wagering multiple credits per line a solution could be developed whereby the jackpot is awarded using a combination of the value of bets made on an EGD and a trigger mechanism that was proportional to the value of bets made. 13. The Aristocrat Hyperlink patent describes a method for determining a jackpot trigger within the EGD. In this caseat the point of commencement of each game, the EGD determines a random jackpot trigger value. If the bet made on that play of the EGD exceeds the trigger value, the EGD reports to the jackpot controller that a jackpot hit has occurred. This provides a trigger mechanism where the probability of wining the jackpot is proportional to the amount bet. 14. In my solution, one could implement a trigger mechanism in a remote jackpot controller whereby inputs from multiple EGDs would be compared against a random trigger value and award jackpot prizes when the trigger condition has been met. This would also solve the problem of determinism of the jackpot prize as the probability of winning does not increase after each game. 15. To overcome problems with network latency in this solution, I would enhance my earlier solution of aggregating bet amounts between inputs into the jackpot controller and require the jackpot controller to receive from the EGDthe total amount of bets and the total number of games played since the last input into the jackpot controller. The controller would then calculate the average bet per play and use this to assess whether or not the trigger had been satisfied. 16. Pool accumulation would continue to be a percentage of the aggregate turnover received by the jackpot controller.' 35 Much of Mr Kopff's criticisms suggest that Mr Spencer was, for the most part, applying matters of common general knowledge with some variations. As will be seen, Mr Spencer's solution contains an aspect of the Neurizon invention. In Mr Kopff's opinion however, Mr Spencer does not show that he was aware of these as solutions. He says Mr Spencer has failed to conceptualise or articulate the solutions in the Neurizon patent. 36 Mr Kopff identified two inventive steps in the Neurizon patent: it would take the amount wagered over an elapsed period to determine the probability of jackpot wins; and it removed, for the first time, the relative competition between EGMs which was used in other systems. The latter was a step which he considered to be of significance. This aspect was to be found in the specification. The amendment proposed would make it clearly part of the claimed invention. 37 In my earlier reasons I acknowledged that it was possible to identify in Mr Spencer's solutions a period which has elapsed. The Full Court has provided a further finding in relation to the Spencer solution (at [152]). In its view: 'The average amount wagered on a game on a particular EGM is itself computed by reference to the amount wagered on that EGM in an elapsed period of time. In consequence using the average amount wagered on a game to influence the probability of the EGM winning necessarily makes that probability dependent, amongst other things, upon at least some of the amount wagered on that gaming machine in an elapsed period of time.' 38 Neurizon accepts that Mr Spencer's solution would infringe its patent. It denies that his evidence is of any weight with respect to obviousness. It submits that he appears not to have appreciated that using the amount wagered in an elapsed period represents the solution. He has, as Mr Kopff points out, nowhere articulated the step. A reading of his affidavit, I consider, bears out this criticism. It is not however apparent to me how this detracts from the weight, if any, to be given to Mr Spencer's evidence. Clearly enough he found that part of the invention. Conceptualising may be relevant in some cases where the inventive step is not in the solution but in the conception of the problem: Hickton's Patent Syndicate v Patents & Machine Improvements Company Ltd (1909) 26 RPC 339 at 347, but it is not relevant here. 39 It is not however apparent to me how Mr Spencer's evidence proves that this part of the invention would have been obvious to a person skilled in the art. It is equally consistent with Mr Spencer being himself inventive. Moreover if Mr Spencer is said to be such a person, it could not be concluded that it was obvious to him in light of common general knowledge. Some of the material he has used has not been shown to be part of the common general knowledge. It is not possible to say that it had no effect upon the process he undertook in reaching a solution. 40 The second aspect of inventive step affects only the patent as amended - which removes the relative contest between EGMs. 41 A reading of Mr Spencer's affidavit, and in particular pars 14 and 15, does not suggest that he turned his mind to this question at all. He is not addressing the issue at either place. Nowhere does he suggest the removal of a relative contest as part of the solution. The only other evidence he gave on the topic under cross-examination was as follows: 'Do you have any suggestions as to how you would use that average amount bet per game? -- I think that goes to what I've said earlier in number 14, paragraph 14, where you might use a bet sized against a trigger value, you know, a total bet. There might be - earlier I'd cited time of day, minutes since last jackpot award. But I've also not said that this is from an individual gaming machine. Oh, Okay? --- I've talked about input into the jackpot controller, which might have come from a number of machines. I see. And so is this more like a - I might use the wrong terminology, but like a relative contest between those EGMs? --- I'm not sure what that would mean as --- Oh, well that's just my - okay. It would be a competition between the EGMs, a comparison between them of the amount they bet, the average amount bet per game? --- That could be one way to do it, yes.' 42 In re-examination the following occurred: 'MR CROWE:If I could take you to paragraph 15 please, Mr Spencer, where you say: To overcome problems with network latency in this solution, I would enhance my earlier solution of aggregating bet amounts between inputs into the jackpot controller, and require the jackpot controller to receive from the EGD the total amount of bets and the total number of games played since the last input into the jackpot controller. When you refer to the EGD there, what are you referring to? We know it means electronic gaming machine, but the reference "the EDG"? --- I guess, as I've written here, that would be of one gaming machine. So the answer you gave to the last question in cross-examination, you said that would be one way of doing it. Its what is explained here in paragraph 15 another way of doing it? --- Yes it is, Sir.' 43 His answers in cross-examination strongly suggest that he had not considered the topic. He simply agreed that there could be a competition between EGMs, as one method. His answer in re-examination again does not suggest he had adverted to the issue before. His being led to recognise an alternative to competition between EGMs, as well does not assist. His solution might be capable of being applied to either scenario, but in my view he did not consider either of them. 44 Lack of an inventive step has not been established. The cross-claim for revocation will be dismissed with costs. There will be an order, pursuant to s 105 of the Act, directing the Commissioner of Patents to amend the patent in accordance with the marked-up version marked 'A' and attached to the Notice of Motion filed on 4 July 2005. The applicant should pay the respondents' costs on the motion. I certify that the preceding forty-four (44) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kiefel.