CONSIDERATION
55 The following passages from Repipe (No 1) are particularly pertinent to the present analysis:
31 The Court in National Research also cautioned that any attempt to state the ambit of s 6 of the Statute of Monopolies by precisely defining 'manufacture' is likely to fail and, further, 'to attempt to place upon the idea the fetters of an exact verbal formula…would be unsound to the point of folly' (at 277).
32 Fifty-five years later, in D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334, Gageler and Nettle JJ emphasised that the way in which a claim is drafted cannot transcend the reality of what is in suit. Monopolies are granted for inventions, not for the inventiveness of the drafting with which patent applicants choose to describe them. The matter must be looked at as a question of substance. Effect must be given to the true nature of the claim: Myriad per Gageler and Nettle JJ (at [144]); see also French CJ, Kiefel, Bell and Keane JJ (at [6], [87]-[88] and [94]) and Gordon J (at [255], in passing). An invention is to be understood as a matter of substance and not merely as a matter of form.
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36 In Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (presently under appeal), Robertson J said (at [201]):
For example, both sides agreed that the matter had to be addressed as a matter of substance. I agree. I also accept that there is no formula to be mechanically applied, and that it is necessary to understand where the inventiveness or ingenuity is said to lie. A mere business innovation is insufficient and a business method or scheme is not, per se, a proper subject for letters patent. Nor are abstract ideas. The issue is whether there is a technological innovation. Where, as here, the claimed invention is to a computerised business method, the invention must lie in the computerisation and it is not enough simply to put a business method into a computer. The search is for an improvement in computer technology ...
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51 Repipe argues that both Patents are not merely business methods or schemes implemented using a computer. The computer is not merely an intermediary or a tool. Rather, the Patents claim technological inventions where the computer technology is integral to, and is the most significant feature of, the claims.
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66 The description is in broad and general terms, describing the performance of various methods of sharing and completing documents using computers. Nowhere is there any disclosure of the technical means that the computers must use to perform the ordinary identified processes of document or information storage, selecting documents, downloading information, displaying the downloaded information, receiving input and uploading the input.
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93 I am not persuaded the Patents in this case are readily distinguishable. No specific application software has been claimed or even identified in any claim of the Patents. No computing programming logic or code is disclosed anywhere in the Patents. The substance of both inventions is a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim. To implement the scheme, a reader must use his/her own skill and knowledge to write an appropriate software application. No such application is disclosed in the Patents.
94 It is not sufficient to rely on the form of the claims rather than their substance. This is clear from the authorities. It is not appropriate for Repipe to simply rely upon the field on which ingenuity is claimed to exist, being the field of computer technology. The language used by patent attorneys when drafting and amending claims cannot convert what is, in substance, an unpatentable business method or scheme into a patentable invention by merely asserting that the invention is in the field of computer technology or by using words in the claim or specification that refer to computer technology: Myriad (at [144]). The issue must be addressed as a matter of substance. As a matter of substance, there is no meaningful technical content in the description in the body of the claims or specification. There is only a scheme. The fact that the scheme may be quicker using a computer than using a paper system is a function of computers not the Patents: see, for example, RPL (at [85] and [104]).
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99 The claimed inventions do not rise above a scheme simply because, as Assoc Prof Hussain described, they are 'a technology driven solution to be able to - for any organisation to be able to comply with work health and safety procedures'. The sense in which the inventions are 'technology driven' is that the schemes use computers to implement a solution to a business problem. The claims use the 'standard' computing functions to provide a non-standard solution. The 'architecture' shown in the figures is nothing more than a standard (generic) server, network and a smartphone or similar, for example, a tablet.
100 It may well be that specific software needs to be designed to achieve the 'invention', but even so, that is not the substance of the claimed inventions. As to the 'specific application software':
(a) No software application or program code for carrying out the identified steps in the computer is defined by the claims or made the subject of the claims.
(b) No software application or program code for carrying out the identified steps in the computer is disclosed anywhere in the complete specifications.
(c) The specifications admit that the claimed inventions may be implemented using any software application, that uses any technical means, that causes a generic server and smartphone to perform the claimed steps.
(d) The 'specific application software' referred to by Dr Aitken is something that must be developed and written by a programmer in order to implement the claimed inventions.
CONCLUSION
101 The claimed inventions are as to a business method. Even if construction of the specifications alone were to produce a different characterisation, that would be to elevate form over substance. The Patents may well contain a good idea, but they are not a manner of manufacture and are not patentable subject matters.
56 In my view, the principle of finality in litigation does require the refusal of leave to file the Second Amendment Application. For the reasons that follow, I also accept the Commissioner's arguments and consider that the First Amendment Application should also be dismissed.
57 Repipe's initial appeal was determined on 22 November 2019. The Commissioner is right to observe that both Amendment Applications are in many respects applications to reopen the primary appeal. There are no circumstances which would justify a reopening as such, nor has Repipe contended that it is a reopening. In substance however, it is. Repipe has made it clear that it intends to appeal my decision in Repipe (No 1). Perhaps that was always the better course to take. The Amendment Applications pay little regard to the reasons in Repipe (No 1). There is no doubt that Repipe was ably represented throughout this proceeding by senior and junior counsel. There was no suggestion at the hearing of the initial appeal of a possible alternative claim set, nor of any application to amend, nor even a reservation of rights which might have attempted to preserve Repipe's ability to do so.
58 It is important to recognise that my reasons in Repipe (No 1) (rightly or wrongly) held that the Patents neither claimed, nor disclosed, patentable subject matter when considered as a matter of substance. What was afforded to Repipe was a strictly limited opportunity only to propose a suitable amendment notwithstanding the view I expressed that I was not convinced that it would be possible to achieve such amendment: Repipe (No 2) (at [17]).
59 Since that time, there has been many pages of proposed amendments in successive versions seeking to recast the form of both the claims and the specification of the Patents. There has been no adequate explanation in this process as to how those claims would overcome the initial difficulties expressed in my findings in Repipe (No 1). The process has unfolded in a responsive way. The Commissioner's objections, in substance, were accepted because Repipe abandoned large parts of the amendments it proposed in the First Amendment Application. This, in turn, has occasioned clearly a substantial amount of work for all involved in the exercise. Ultimately there have been amendments; amendments to the amendments; and then amendments to the amendments to the amendments.
60 In relation to the finality principle, in Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 it was made clear (at 301-302) that the exercise of the jurisdiction to reopen a judgment and to grant a rehearing is not confined to circumstances in which the applicant can show that, by accident and without fault on the applicant's part, he or she has not been heard. But the jurisdiction is to be exercised with great caution, having regard to the importance of the public interest in the finality of litigation: Wentworth v Woollahra Municipal Council (No 2) (1982) 149 CLR 672 (at 684). In Autodesk, although Mason CJ held in dissent that the case should be reopened, as a matter of general principle the Chief Justice held (at 303) that:
… it must be emphasized that the jurisdiction is not to be exercised for the purpose of re-agitating arguments already considered by the Court; nor is it to be exercised simply because the party seeking a rehearing has failed to present the argument in all its aspects or as well as it might have been put. What must emerge, in order to enliven the exercise of the jurisdiction, is that the Court has apparently proceeded according to some misapprehension of the facts or the relevant law and that this misapprehension cannot be attributed solely to the neglect or default of the party seeking the rehearing. The purpose of the jurisdiction is not to provide a backdoor method by which unsuccessful litigants can seek to reargue their cases.
61 As the Commissioner contends, an application to amend a pleading or any other document does not provide a basis for avoiding the need to confront the principles relating to reopening where the application is made after the delivery of reasons for judgment: see also Aristocrat v IGT per Allsop J (as the Chief Justice then was) and Nutrasweet Australia Pty Ltd v Ajinomoto Co Inc (No 3) [2007] FCA 966 per Finkelstein J (at [20]-[25]) where it was said, albeit in the context of validity:
20 …. According to the cases, a patentee is not entitled, following a trial on validity, to bring an application to amend the invalid claims, except in very limited circumstances and this is not one of them.
21 Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59 was an infringed action. The defendant successfully contested the validity of the patent in suit on several grounds, including obviousness. After judgment against the plaintiff was given, counsel asked for the order revoking the patent to be suspended pending consideration of an amendment to the specification. The application was refused. Oliver J said (at 81):
"[I]t was for the plaintiffs, if they wished to support their claim to monopoly on some alternative basis, to raise the point and adduce the appropriate evidence for that purpose at the trial. In fact, however, no-one, from first to last, advanced or considered the specialised qualities of a surfboard as an inventive concept and the suggestion that there should be an adjournment for this now to be raised and investigated as a basis for the claim to monopoly involves, in effect, a fresh trial, the recalling of most, if not all, of the most important witnesses, and a considerable degree of recapitulation of the evidence as well as the calling of fresh evidence on an issue never previously suggested either in the specification or in the pleadings. We would require considerable persuasion that the imposition upon a successful defendant of such a manifestly inconvenient and oppressive course would be a proper exercise of discretion even in an otherwise strong case."
22 A similar situation arose in Lubrizol Corp. and Another v Esso Petroleum Co. Limited and Others [1998] RPC 727. In that case Aldous LJ (with whom Brooke and Roch LJJ agreed) refused an application for leave to amend a patent after trial. He said "(at 790) "[I]t is a fundamental principle of patent litigation that a party must bring before the court the issues that he seeks to have resolved, so as to enable the court to conclude the litigation between the parties."
23 So also in Sara Lee Household & Body Care U.K. Ltd v Johnson Wax Ltd (2001) 17 FSR 261. There David Young QC, sitting as a Deputy Judge of the High Court, refused an application to add new claims to a patent found to be invalid. He said that what the patentees wanted was "to have their cake and eat it". He referred to Raleigh Cycle Co. Ltd v Miller H. & Co. Ltd (1950) 67 RPC 226, 230 where Lord Normand said that having been put on notice that there was an attack on the validity of their patent, the patentees were "put to an election between amending these claims and continuing their action without amending while maintaining that the claims were valid" and having chosen the second alternative, they were disentitled from pursuing the first except in "very special circumstances". Mr Young QC also referred to Lubrizol Corp. v Esso Petroleum Co. Ltd.
24 In Ancare New Zealand Ltd's Patent [2001] 20 RPC 335, Gault J (with whom Henry and Thomas JJ agreed) suggested there may be "special circumstances" in which an amendment could be entertained after judgment. He instanced by way of example a patent held to be invalid in part where the amendment is required to excise the invalid part. For example in Nikken Kosakusho Works v Pioneer Trading Co. [2006] FSR 4 the English Court of Appeal (per Jacob LJ) said that it might also be possible to permit an amendment the effect of which would be to rewrite claims so as to exclude invalid claims (or dependencies). Reference was made to Hallen Co v Brabantia (UK) Ltd [1990] FSR 134 where it was said that "a proposed claim which was not under attack and could not have been under attack prior to trial" would not be allowed after trial.
25 These cases (most of which were followed by the Full Court in Woolworths Limited v BP plc (No 3) [2006] FCAFC 160) show that the course Ajinomoto was attempting to take was simply not available to it.
62 Although an amendment after judgment was permitted in the Merial Inc v Intervet International BV (No 4) [2017] FCA 223, Moshinsky J pointed out two kinds of cases that might arise (at [34]-[35]):
34 This is not a situation, for example, where grounds of opposition have succeeded in establishing that the specification as it stands is deficient, but the decision-maker (whether it be the Commissioner of Patents or the Court on appeal) decides that the deficiency can be cured by amendments to the specification. That would likely have been the case had the only ground of opposition here been lack of inventive step. That ground of opposition was successful in respect of some claims but not others. It would likely have been the case that, had that been the only ground of opposition, the deficiencies in the specification could have been "cured" by amendment.
35 The situation here is very different. First, the issue of lack of entitlement goes to the heart of the Patent Application. The outcome on this issue (namely that Intervet is not entitled to the invention) cannot be overcome without a wholesale change to the basis of entitlement. Such an amendment is a fundamentally different proposition from those categories of amendment which have been accepted in the cases. Secondly, the ground of lack of entitlement was dealt with fully at the hearing of the appeal and in the Reasons. In my view, the Reasons dealt with and decided the issue of lack of entitlement generally, not merely the issue of lack of entitlement as presented by the parties on the basis of the facts as they stood at the time of the hearing. In these circumstances, it would be inappropriate, in my view, to allow Intervet to apply to amend the Patent Application or notice of entitlement to claim entitlement on a new and different basis. Among other things, this could lead to a situation where the issue of lack of entitlement would need to be re-agitated on this new and different basis. This should not be permitted to occur in circumstances where there has already been a hearing and determination of this issue.
63 In any event, and as a separate but fundamental reason, the amendments in any of their forms would be futile. Repipe has attempted to add detail to the claims of the two Patents in order to create a manner of manufacture, but in a way which it contends is properly drawn from the body of the specification of each of the claims. The difficulty is that the detail in the amendments, if it is properly drawn from the specifications, cannot transform the substance of the invention into a manner of manufacture because findings have already been made in relation to the disclosure in the specification of the Patents and the conclusion reached that no patentable subject matter was disclosed.
64 The alternative possibility is that the detail in the amendments is not properly drawn from the specification and goes beyond what is disclosed in some way. That, of course, gives rise to the s 102 issues which the Commissioner has raised.
65 Either way the amendments would fail to comply with the Act due to the findings in Repipe (No 1). The addition of generic detail to the claims, or elaboration on detail disclosed in the specification, cannot elevate a non-existing manner of manufacture to a manner of manufacture. Detail that is not generic or not disclosed cannot be added by way of amendment because of s 102 of the Act.
66 In any event, the basic difficulty at the heart of these applications is that the amendments do not change the substance of the invention. They do not confer any manner of manufacture where there was none previously. Nothing in the proposed amendments changes the fact that each Patent is directed to solving a business problem in the field of work place health and safety and does not present a technical solution to a technical problem. The substance of the invention in each case is merely a business method or scheme requiring generic computer implementation.
67 There is a category of amendments which relates to the addition of two claims or features concerning GPS tracking, for example, claim 4 in the 943 Patent. But the hardware sought to be added is entirely generic and the functions to be performed are functions of computer technology as it presently exists. All that is disclosed is a scheme. For example, the amended claims disclose the use of GPS technology to gather location data to be used for cross-referencing and geofencing. The fact that the existing GPS technology may be put to use in a new scheme is not sufficient to constitute patentable subject matter. The generic technology is used in the same way it is normally used, albeit that it is applied in a new scheme. In this regard, the decision of the Court (Rares, Nicholas and Burley JJ) in Rokt (at [85]) is apposite:
85 The reference to using the computer for its "well-known and understood functions" involved consideration of computers having regard to their basic and well-known functions. This did not require, and should not be taken to encourage, a review of the common general knowledge beyond the use of the common general knowledge, to the extent necessary, to construe the specification.
68 Repipe contends that if it is reasonably arguable that the amendments will overcome the manner of manufacture absence, then they should be permitted. Repipe has stressed that it will appeal my decision in Repipe (No 1) if these amendments are disallowed. The prospect of there being an appeal does not provide a proper basis for allowing the amendments. It is necessary to determine at this stage whether the amendments do in fact overcome the absence of manner of manufacture findings. For reasons stated, they do not.
69 Repipe particularly relies upon the decision of the Full Court in Rokt and the decision of Burley J in Aristocrat v Commissioner of Patents. I am not persuaded that either of these decisions impact adversely upon the analysis in Repipe (No 1). But if I am wrong about that, it is a matter for appeal. The decision in Rokt is of particular relevance and directly pertinent. The Full Court affirmed and defined the approach of assessing computer or business method schemes that was adopted by the Full Court in Encompass and discussed in Repipe (No 1) (at [40]-[46] and [95]-[96]). It also applied and upheld Research Affiliates which I followed in Repipe (No 1) (at [37]-[39]). The Full Court in Rokt said the following (at [108] and [115]):
108 There is no doubt that so understood, the invention is a scheme or, more accurately, a marketing scheme. The question that arises is whether it can broadly be described as an improvement in computer technology; whether the computer is a mere tool in which the invention is performed or whether the invention lies in the computerisation: RPL Central at [96].
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115 In the present case, the claim amounts to an instruction to carry out the marketing scheme. The level of abstraction at which it is expressed demonstrates that it does no more than provide a list of steps to be implemented using computer technology for its well-known and understood functions. Nothing in the specification suggests otherwise. This may be seen from the instructions explained as steps S1a to S10a in the specification (see [26] above). They comprise a list of general instructions to write software. Even if the scheme is new and ingenious, it is not made patentable merely because it can or must be implemented using computer technology. Rather, the language of the specification and the broad statements of steps required to be taken in claim 1 do no more than locate the scheme in computer technology, using its well-known and understood functions. The position is not distinguishable from that in Encompass. In our respectful view, the learned primary judge erred in finding otherwise.
70 The conclusion in Rokt by the Full Court was that the claim amounted to nothing more than instruction to carry out the business scheme, which in that case, was a marketing scheme. The claims in this instance are nothing more than an instruction to carry out a work place health and safety document scheme using generic computer technology.
71 The decision of Burley J in Aristocrat v Commissioner of Patents, in my view, is quite distinguishable. It did not, on his Honour's findings, involve the use of generic computer technology such as a smartphone and a server. Rather, the findings were that the claim was directed to a device, namely, an electronic gaming machine, which his Honour held by reference to regulatory and other considerations specific to the context of gaming machines, was a device of a specific character. His Honour said (at [98]):
The result is that to the person skilled in the art, the invention may be characterised as a machine of a particular construction which implements a gaming function. It yields a practical and useful result. Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character.
Repipe have also contended there is a two-stage test following Aristocrat v Commissioner of Patents which the Commissioner does not accept. I note that an appeal from Burley J's decision was heard by the Full Court (Middleton, Perram and Nicholas JJ) on 11 November 2020 in proceeding NSD 787 of 2020 and the Court has reserved its decision. In either event, it appears to me to be distinguishable. It will be recalled that Burley J stated in Aristocrat v Commissioner of Patents that the correct approach to a dispute of this nature involved two steps, stating (at [91]) that there was:
(a) an initial question whether the claimed invention is for a mere scheme or business method of the type that is not the proper subject matter of a grant of letters patent; and
(b) only if the first question is answered in the affirmative, a second question whether the computer implemented method is one in which invention lies in the computerisation of the method, in particular whether the claim requires 'generic' computer implementation.
72 Aristocrat v Commissioner of Patents post-dates Repipe (No 1) and while the Commissioner says that she does not agree with the two-stage test, it seems to me that in this case, application of such an approach for all the reasons now stated on numerous occasions in this litigation would yield precisely the same conclusion. It does not assist Repipe in overcoming the core problem.
73 Finally my remarks on the s 102 point can be brief as it is clear that the other reasons I have relied upon require rejection of the amendments in any form proffered. Generally I agree with the submissions for the Commissioner on this issue and in light of my other expressed reasons for rejecting the Amendment Applications, it is unnecessary to overly complicate and further delay production of these reasons by dealing with each of the arguments point by point.