Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956

(22 November 2019)

Patent validity – manner of manufacture – whether methods and systems for providing and receiving information for risk management in the field are patentable

The Commissioner of Patents revoked two innovation patents owned by Repipe on the basis that the inventions did not comprise a manner of manufacture.

For present purposes it is sufficient to consider claim 1 of the first innovation patent in issue, which claimed “A method of providing information for risk management to a user of a portable personal computing device performing a job in the field, said method comprising:

  • selecting a document to be completed by the user related to a job to be performed by the user;
  • downloading information to the portable personal computing device;
  • displaying the downloaded information for selection of items in the information so as to complete the selected document; wherein the downloaded information comprises information provided by one or more other users having an administrative role and information provided by one or more other users having a field worker role;
  • receiving input to the portable personal computing device, wherein the input comprises selection of one or more of the items in the information, and/or the input comprises providing new information;
  • uploading the input, whereby a record of the input is stored in relation to the selected document, and the new information is added to the information to be downloaded by other users.

The trial before McKerracher J was heard prior to the Full Court handing down its decision in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 145 IPR 1.  The Full Court there held that the patents in suit, which concerned a method for displaying information relating to entities so as to “provide business intelligence”, did not claim an invention that was a manner of manufacture.  The Full Court observed that, while the specification described a variety of processes for better representing such information, the description was largely agnostic as to how the method should be implemented and could use any suitable processing system.  As McKerracher J observed, the Full Court in Encompass explained that the Full Court in each of Research Affiliates[1] and RPL,[2] correctly, “was seeking to describe the conceptual distinction between a manner of manufacture and an unpatentable abstraction” and “was explaining that a claimed method that is unpatentable does not change its legal character merely because the method is implemented by the instrumentality of a computer”.

McKerracher J concluded that, while the patents before him may disclose a good idea, the claimed inventions were to an unpatentable business method and, “even if construction of the specifications alone were to produce a different characterisation, that would be to elevate form over substance”.

McKerracher J accepted the following matters in favour of Repipe.  First, the fact that the patents do not claim to have invented new hardware does not mean they are not patentable.  Secondly, the fact that they do not claim to rely on artificial intelligence does not mean there is no patentable method – “artificial intelligence is not a pre-requisite for patentability of a computer-implemented business method”.  Thirdly, the inventions “could not be carried out using a generic or unconfigured server or smartphone, because the tasks those devices must perform are so specific”.

Nevertheless, McKerracher J concluded that “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.”

Therefore, as a matter of substance, the claimed invention was to a scheme, without any meaningful technical content in the specifications.  The fact that the scheme may be better implemented by using a computer “is a function of the computers not the Patents”.  His Honour concluded that “if on proper analysis, and as a matter of substance, a claimed method merely requires generic computer implementation then the method cannot be a manner of manufacture” and observed that the Full Court in Encompass had rejected the contrary argument in circumstances where the claims there also did not have as an essential feature any particular software or programming that would carry out the method but left it to the skilled addressee to devise and then implement a suitable computer program for that purpose.

[1] Research Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378.

[2] Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27.

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