Repipe Pty Ltd v Commissioner of Patents

1. The application for leave to appeal be dismissed with costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

PERRAM J: 1 This is an application for leave to appeal from orders of the Court giving effect to a conclusion that the claims made in two innovation patents did not disclose patentable subject matter. In the proceeding below there were two patents in suit, patent number 2017100560 ('the 560 Patent') and patent number 2017100943 ('the 943 Patent'). It was accepted on appeal that the issues arising from the two patents were relevantly the same and attention may therefore be confined to the 943 Patent and, more specifically, to claim 1 of that patent. 2 The 943 Patent is entitled 'Methods and Systems for Providing and Receiving Information for Risk Management in the Field'. The specification at [1] discloses that the invention relates to systems for providing and receiving information in the field including 'receiving notifications based upon user-specific location, activity and authority and changes in each'. It identifies that existing checklists and risk assessments are paper-based and that there are problems with this: [4]-[5]. The use of the method allows changes in authority to be responded to dynamically ([119]) and also by reference to location ([57]). These outcomes can be achieved by sending auto-alerts to field workers: [140]. 3 Claim 1 of the 943 Patent as granted is as follows: 1. A method of providing information for risk management to a user of a personal computing device performing a job in the field, said method comprising: identifying the user; selecting a job to be performed by the identified user; downloading information related to the selected job to the portable device, wherein the downloaded information comprises information determined according to the user's role in relation to the selected job, and the maximum authority that role has in relation to the selected job; displaying the downloaded information for selection of one or more indicia in the information so as to complete a document required for the identified user's role in relation to the selected job; receiving input to the portable device, wherein the input comprises a selection of at least one of the indicia; uploading the input, whereby a record of the input is able to be used in relation to the selected job. 4 The invention thus consists of the use of the features of GPS-enabled mobile devices to communicate with a central server which handles information in a particular way. Whilst I have no difficulty in accepting that the invention is useful and represents a clever use of mobile devices and a server, I am unable to see how it constitutes an advance in computer technology. Rather, it is a deployment of existing computer technology for a useful purpose. As such it does not constitute patentable subject matter: Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86; 277 FCR 267 at [84]-[91] per Rares, Nicholas and Burley JJ; Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161; 372 ALR 646 at [94]-[110] per Allsop CJ, Kenny, Besanko, Nicholas and Yates JJ; Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; 227 FCR 378 at [117]-[120] per Kenny, Bennett and Nicholas JJ; Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; 238 FCR 27 at [96] and [102] per Kenny, Bennett and Nicholas JJ. 5 The Applicant's central submission was that the functionality lay in the configuration of the mobile devices and the server which was to be seen as akin to the useful apparatus identified by Burley J in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778; 38 ALR 400 ('Aristocrat'). That case was concerned with a computer-powered electronic gaming machine. His Honour concluded that an electronic gaming machine on which was installed a particular feature game was patentable subject matter. This was because the patent was not for the mere business scheme constituted by the feature game but was instead for the particular apparatus consisting of the electronic gaming machine. 6 The Applicant's submission in this case was that an analogy could be drawn between, one the one hand, his Honour's acceptance that the patent was for the machine and not for the feature game which it provided to players and, on the other, the configuration of the mobile devices and the server in the case of this invention. In its written submissions, for example, the Applicant contended that 'just as in Aristocrat, the only purpose of the claimed invention is to provide devices (here servers and portable computing devices) with the functionality claimed'. 7 Since the hearing of this matter, the Full Court delivered judgment upholding an appeal from Burley J's decision in Aristocrat: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202. However, even if this had not occurred, the correctness of Burley J's conclusion does not arise on this application for leave to appeal. There is no analogy between the patent in that case and the patent in this case. The devices in this case are all standard mobile devices and servers. Regardless of whether one thinks that an electronic gaming machine on which a feature game is implemented constitutes a particular physical apparatus or, instead, a generic computer-implemented invention, it is clear that the present invention is nothing more than some mobile devices connected to a server configured to behave in a particular way. 8 Whilst I would not rule out the possibility that a particular use of a mobile device with a server might constitute an actual advance in computer technology (as distinct from a mere use of that technology) this invention does not come close to satisfying that requirement as the primary judge was correct to conclude. The primary judge was also correct to conclude, contrary to the Applicant's submission referred to at [6] above, that the evident purpose of the claimed invention is to solve a problem in the field of business operations, specifically the management of work, health and safety information: [2019] FCA 1956 at [98]. It is not directed to solve a problem which can broadly be understood to lie in the field of computer technology. A careful reading of claim 1 in light of the specification, including the parts of the specification to which I referred at [2] above, reinforces the primary judge's conclusion. 9 Leaving aside the anomalous position of electronic gaming machines, to my knowledge this Court has upheld the patentability of computer-implemented inventions only twice. One concerned the curve drawing algorithm in International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218 and the other the use of an English language keyboard to generate Chinese characters in CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396; 51 FCR 260. In both cases, the inventions could broadly be characterised as an improvement in computer technology. That is not so in this case. 10 After the primary judge published his reasons, the Applicant sought leave to reopen its case on the basis that it wished to amend the patent to address the absence of patentable subject matter under s 105 of the Patents Act 1990 (Cth) ('the Act'). In my view, this was inherently unsound. The question of how the invention was to be characterised for the purpose of assessing patentability was to be determined as a matter of substance not form: D'Arcy v Myriad Genetics Inc [2015] HCA 35; 258 CLR 354 at [87]-[88], [94] per French CJ, Kiefel, Bell and Keane JJ and [144]-[145] per Gageler and Nettle JJ. Tinkering with the form of the patent could not alter that analysis. An invention which did not broadly represent an advance in computer technology could not by amendment be transformed into one which did. If the amendments succeeded in doing so what would then be disclosed would be in substance a different invention. 11 Such an outcome is proscribed by s 102(1) of the Act which forbids an amendment 'if as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed'. The short of the matter then is that the proposed amendments necessarily either did not overcome the problem that the invention did not constitute patentable subject matter or, if they did, they were precluded by s 102(1). In either case, the application to amend was correctly refused by the primary judge. 12 The decisions below are not attended by sufficient doubt to warrant the grant of leave to appeal. The application for leave to appeal should be refused with costs. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Perram.