Aristocrat Technologies Australia Ltd v IGT (Australia) Pty Ltd [2007] FCA 1540

Aristocrat Technologies Australia Ltd v IGT (Australia) Pty Ltd [2007] FCA 1540

The Court was not persuaded on the evidence that continued accumulation in an excess pool was merely a workshop equivalent or inessential integer, and therefore did not reject claims 8 and 16 on that basis. Because claims 8 and 16 could stand, the omnibus claims could encompass the same essential feature and were not rejected. The patent application was not to proceed to grant unless amended by deleting invalid or affected claims, rewriting claims 8, 16 and 19 as independent claims, correcting a misspelling and renumbering. Costs were ordered against the respondents generally, except for costs associated with grounds not pressed and the specified subpoena, for which the applicant bore...

Jurisdiction
Australia
Judgment Date
09 October 2007
Procedural Posture
Appeal From a Decision of the Delegate of the Commissioner of Patents Concerning Australian Patent Application No 748263 / Final Orders Following Reasons for Judgment and Further Argument on Short Minutes, Amendment, Costs and Stay
Outcome
The Delegate's decision was set aside in part; the patent application was not to proceed to grant unless amended as ordered; costs and stay orders were made.
Legal Topics
['patent Application Opposition' 'novelty' 'inventive Step' 'patent Claim Amendment' 'omnibus Claims' 'costs' 'stay of Orders']
['intellectual Property' 'patents' 'civil Procedure'] ['patent Application Opposition' 'novelty' 'inventive Step' 'patent Claim Amendment' 'omnibus Claims' 'costs' 'stay of Orders']

Case Brief

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Procedural Posture

Appeal From a Decision of the Delegate of the Commissioner of Patents Concerning Australian Patent Application No 748263 / Final Orders Following Reasons for Judgment and Further Argument on Short Minutes, Amendment, Costs and Stay

Legal Issues

  1. 1 ['Whether claims 8 and 16 failed because the continued accumulation in an excess pool was a workshop variation or inessential integer' 'Whether the omnibus claims should be rejected given the conclusions about claims 8 and 16' 'Whether dependent claims 8, 16 and 19 should be rewritten as independent claims and other amendments permitted' 'Whether the applicant should pay costs associated with grounds not pressed and a subpoena to Bellamy, Miller and Monypenny Pty Ltd' 'What form of final orders should be made and whether their operation should be stayed']

Ratio Decidendi

The Court was not persuaded on the evidence that continued accumulation in an excess pool was merely a workshop equivalent or inessential integer, and therefore did not reject claims 8 and 16 on that basis. Because claims 8 and 16 could stand, the omnibus claims could encompass the same essential feature and were not rejected. The patent application was not to proceed to grant unless amended by deleting invalid or affected claims, rewriting claims 8, 16 and 19 as independent claims, correcting a misspelling and renumbering. Costs were ordered against the respondents generally, except for costs associated with grounds not pressed and the specified subpoena, for which the applicant bore...

Court Disposition

The Delegate's decision was set aside in part; the patent application was not to proceed to grant unless amended as ordered; costs and stay orders were made.

Orders

  • ['The decision of the Delegate of the Commissioner of Patents in respect of Australian Patent Application No 748263 made on 25 August 2004 be set aside except insofar as the Delegate found that the invention defined by claims 17 and 18 lacked novelty and did not involve an inventive step.' 'Australian Patent...