For the first time since the landmark High Court case of Aristocrat in 2021, the Australian Federal Court has considered the patentability of a computer-implemented invention (CII)., The decision provides some much-needed clarity and provides more support for the position that computer implemented inventions can be patentable subject matter.
If we look back to the Aristocrat case, the question of whether a computer-implemented invention was patentable was left unclear due to a 3-3 split in the decision. The High Court hearing considered an appeal from the Full Federal Court decision of Aristocrat2.
In the recent3 case – Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585 (Motorola), the Australian Federal Court considered whether methods relating to data communications carried out on an existing device were patentable subject matter.
In this case, Motorola Solutions Inc (‘Motorola’) sued Hytera Communications Corporation Ltd (‘Hytera’) and its Australian subsidiary, Hytera Communications (Australia) Pty Ltd (‘Hytera Australia’) alleging, inter alia, infringement of three of its granted Australian patents.
These patents related to a technology which allowed a frequency band within the radio frequency spectrum to be divided into timeslots so that more than one person could use the same channel at the same time. This technology was known as Time Division Multiple Access (TDMA).
The three patents were directed to methods which improved the efficiency of the TDMA technique. The first patent, No. 2005275355 (‘355 Patent’), was a method and system which improved the time taken to scan a channel to determine whether there was activity on that channel. The second patent, No. 2009298764 (‘764 Patent’), was for a method for efficiently synchronising to a desired timeslot, and the third patent, No. 2006276960 (‘960 Patent’), was for a method and system for accessing a base station.
In its suit, Motorola asserted that Hytera imported into Australia devices that infringed the three patents. In a counterclaim for invalidity, Hytera alleged the patents were invalid for not being a “Manner of Manufacture” (i.e. not being subject matter that was eligible for patent protection) in light of the Aristocrat decision.
Hytera’s submission was that there could be no manner of manufacture where what was claimed merely involved the new use of a known thing for a purpose for which its known properties made it suitable. That is, that the use of a known digital mobile radio (DMR) to carry out a method of steps, was not a manner of manufacture, and thus not patentable.
It then submitted that the methods claimed, as a matter of substance, was a scheme, working directions or directions for use, rather than an ‘improvement in computer technology’. It did not involve or contribute to any new hardware or software. The patent was merely a method achieved by programming existing hardware to carry out specified steps.
In considering the issue of patentability, Perram J, acknowledged4 that it was accepted that a computer-implemented invention would be patentable if, in substance, it constituted an improvement in computer technology rather than a use of that technology, and referenced a number of prior cases supporting that statement. Further, Perram J stated that neither the Federal Court decision nor the High Court decision of Aristocrat departed from that position, although it was notable that in the High Court decision, it was agreed that an improvement in computer technology was not a requirement for patentability.
In applying this position, Perram J rejected Hytera’s submissions and stated that the method “improves the way a particular class of computers – base stations and subscriber units – scan frequencies” 5, and the implementation of the claimed method solved the technical problem of how to improve scanning times in a TDMA communications system. As such, it was held that the claimed invention resulted in an improvement in computer technology and was thus for a manner of manufacture and therefore patentable subject matter.
This decision, together with another recent decision in UbiPark6 provides some clarity that a computer implemented method, constituting a new method, even if carried out on a known piece of hardware, can be for a manner of manufacture and is thus patentable subject matter.
It will be seen whether this position changes or is further reinforced if either of these cases is appealed.
- Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29; 96 ALJR 837 – readers can view my colleague Dr Anthony Lee’s article on this case here
- Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202; 163 IPR 231
- Note that while this case was decided in December 2022, it has only recently been published due to associated confidentiality arrangements
- Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585 at [356]
- ibid at [358]
- UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885
