Have you been following the Aristocrat gaming machine matter dealing with the patentability of computer-implemented inventions in Australia?
Background
Last time I wrote about this long-running litigation between Aristocrat Technologies Australia Pty Limited (Aristocrat) and the Commissioner of Patents (Commissioner) back in September 2024, Aristocrat had been successful in its application for leave to appeal an earlier Federal Court decision rejecting a bunch of “residual” claims in various patents directed to electronic gaming machines (EGM) (see Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2024] FCA 987 (Leave Decision)).
This matter commenced back in 2018 with the Commissioner (i.e. the Australian Patent Office) rejecting several Aristocrat innovation patents directed to a new computer-implemented gaming machine on the basis that they weren’t directed to patentable subject matter. Aristocrat appealed to the Federal Court, with the parties agreeing to conduct the litigation on the basis of a “representative” claim selected from the rejected patents. Aristocrat succeeded in this initial appeal, with the Federal Court finding the representative claim to be patentable. This decision was then overturned by the Full Federal Court on appeal by the Commissioner. Finally (and sensationally), the High Court of Australia, on a further appeal by Aristocrat, split evenly in 2022 with three justices dismissing the appeal and the remaining three justices allowing the appeal. Because of the tie, the earlier Full Court decision was upheld.
Consideration by the High Court
As a result of the Leave Decision late last year, Aristocrat preserved for itself the option of having the litigation currently dealing with the residual claims “removed” to the High Court for its determination without first having the matter heard by the Full Federal Court. Aristocrat would, however, first need to convince the High Court to take on the matter by being successful in an application for special leave to appeal.
Unfortunately for Aristocrat, the High Court has recently refused special leave stating that:
“The Appeal does not raise an issue of wide and significant public importance which requires urgent resolution and would justify the interruption of the appellate process of the Full Court of the Federal Court, the absence of the reasons of that Court, and allowing the applicant to by-pass the requirements of s 35A of the Judiciary Act” (Aristocrat v Commissioner [2025] HCADisp 7 at [2]).”
This is perhaps not a surprising decision by the High Court, although disappointing for those of us who would like to see the High Court finally settle the approach that should be taken with respect to the patentability of computer-implemented inventions.
This is not the end!
Aristocrat will presumably continue with its appeal, but now to the Full Federal Court. The Full Court will then in due course make its determination as to the patentability of the residual claims. Depending on that decision, either Aristocrat or the Commissioner could apply to the High Court for special leave to appeal. At this stage, the High Court will either refuse special leave and finally put an end to this litigation or grant the application and perhaps give its considered view as to the correct approach to be adopted in the assessment of the patentability of computer-implemented inventions.
Stay tuned to find out…
