Jupiters Misses the Jackpot

On 23 May 2005, the Full Federal Court handed down Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90 . The respondent, "Neurizon" is the proprietor of Australian patent no. 714299. Claim 1 is most relevant. It describes "a method of awarding a prize in a gaming system comprising at least one gaming machine characterised in that the probability of each gaming machine winning the prize is dependent upon at least some of the amount wagered on that gaming machine during an elapsed period of time." In such claims, the characterising portion sets out the distinguishing feature of the claimed invention.

The appellant, Jupiters, developed a gaming system after the priority date of the above patent. This matter arose when Neurizon sued Jupiters for infringement. Neurizon was successful. Jupiters and a number of other parties appealed. As is usual with such cases, the matter also involved a cross claim by Jupiters and the others for revocation of the Neurizon patent on a number of bases, including lack of novelty, lack of inventive step and lack of fair basis of the claims on the specification.

The method used by the Jupiters system was similar to the method described in claim 1. The difference of opinion between the parties arose from the interpretation of "an elapsed period of time" in claim 1. The Jupiters gaming system carried out the step of polling the gaming machines every second to determine the amount wagered on that machine. Jupiters contended that its "Cougar" system did not use"an amount wagered during an elapsed period".

In short, Neurizon managed to show that the Cougar system did infringe claim 1. Jupiters failed to show that the claimed invention lacked novelty. The matter was referred back to the primary court on the question of inventive step since further evidence was required.

The court set out a list of points gleaned from authoritative cases useful when interpreting a specification:

1. The proper construction of a specification is a matter of law.
2. A specification is to be given a purposive and not a purely literal construction.
3. The words of a specification are to be interpreted as if by a person of ordinary skill in the art.
4. The scope of the claims should not be broadened or narrowed by adding glosses drawn from other parts of the specification. However, unclear terms may be defined by referring to the specification.
5. Experts can give evidence on the meaning which those skilled in the art would give to technical, scientific or unusual terms and phrases.

The court held that the expression "an elapsed period" is neither uncertain nor ambiguous. Importantly, claim 1 did not need to specify a method for determining the boundaries of the "elapsed period". The evidence of a witness indicated that there were many ways in which an elapsed period might be determined in a gaming system and that this would be clear to those skilled in the art from what is taught by the patent. It was clear that the Cougar system based a probability of winning upon at least some of the amount wagered on a machine "during an elapsed period".

On the issue of whether or not the claims were fairly based on the specification, the court turned to Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 232 ALR 1. It is wrong to consider whether "essential features" in the body of the specification correspond to essential integers of a claim. The question is whether there is a real and reasonably clear disclosure in the body of the specification of what is claimed. As with the Lockwood case, it was found that the consistory clauses (broad statements in a summary of the invention) provided sufficient basis for the claims.

Bazpat will look out for the inventive step decision.


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