Rokt unsuccessful in the Full Court

Nick Li

The Full Court in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 reversed the decision of the trial judge, finding for the Commissioner of Patents that Rokt’s digital advertising systems and methods invention does not constitute patentable subject matter. The decision further clarifies the patentability of computer-implemented inventions at Australian law.

Key takeaways

  • Computer-implemented inventions are not patentable if the claimed invention is merely using a computer in its basic, ordinary functions, as a vehicle to implement a scheme.
  • The fact an invention can only be performed with a computer does not mean the invention is patentable.
  • Assessment of patentable subject matter (‘manner of manufacture’) is a legal question for the court (in which expert evidence plays only a limited role), based on construction of the specification and the claims. In contrast with the practice presently advocated in the Patent Office Examiner’s Manual, the task of construction should not involve a detailed review of common general knowledge or prior art.

Who in your organisation needs to know about this?

This decision affects legal and patent counsel, particularly in businesses investing resources in software development.

Full Court won’t take Rokt’s click bait

The Full Court of the Federal Court unanimously held that the trial judge erred in holding that Rokt’s invention was patentable. The Full Court accepted the Commissioner of Patents’ submission that the trial judge’s reliance on the expert evidence came at the expense of properly construing the specification and claims of the patent in suit.

The court decided that Rokt’s invention, as described in the specification and claimed, disclosed nothing more than the use of computers for their well-known functions, to implement an abstract marketing scheme by provision of an ‘encouragement offer’ (uncharitably referred to by the court as ‘click-bait’).

Background of the dispute

The Commissioner’s delegate determined in 2016 and 2017 that Rokt’s patent, titled ‘A digital advertising system and method’ , should not proceed to grant, for lack of patentable subject matter.

Rokt successfully appealed the decision of the delegate to the Federal Court in 2018, as discussed in our previous coverage [Link: ].

The Commissioner subsequently sought, and was ultimately granted, leave to appeal to the Full Federal Court (leave being required under s 158(2) of the Patents Act 1990 (Cth) for decisions relating to appeals from patent office decisions) on the basis that:

  • the trial decision is inconsistent with existing Full Court authority;
  • there is a public interest in the integrity of the Register of Patents; and
  • the trial decision has led to doubt as to the correct approach taken by the Commissioner in examining such patent applications.

The invention

The invention claimed in Rokt’s patent application relates to the field of digital advertising systems and methods.

The objective of the invention is to increase consumer engagement with advertising. Real-time targeting of consumers based on their viewing habits, and simultaneous evaluation of attributes are said by the specification to be used already in digital advertising and do not form part of the substance of the invention (though these technologies are employed in the system).

Rokt’s invention is a method or system that involves presenting the user with an ‘engagement offer’, the primary purpose of which is not to sell a product or service to the user, but rather to encourage the user to engage with the offer. By engaging with the offer, the user is taken on an ‘engagement journey’ which involves the targeted presentation to the user of one or more advertisements based on the behavioural and contextual attributes determined by the system.

Claim 1 was the only claim in dispute before the Full Court and comprised 12 integers and may be summarised as claiming ‘a computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer which is operable to drive a higher level of engagement with the advertising message than if the advertising message was presented without the offer’.

The primary judge’s error

Relevantly, the primary judge leaned heavily on expert evidence provided at trial to arrive at the following five points supporting the decision:

  • the resolution of the matter lay largely in the ‘realm of facts’;
  • the introduction of the ‘engagement offer’ constituted the key feature of the invention;
  • the invention solved a business problem and a technical problem;
  • use of computers was integral to the invention; and
  • the integration of the components into a single system was innovative and previously unknown.

The Commissioner submitted, and the Full Court agreed, that whether the claimed invention is a ‘manner of manufacture’ (ie, patentable subject matter) is not a matter that lay largely in the ‘realm of facts’. Rather it was a matter for the Court to determine based on construing the specification and the claims. The Full Court emphasised that the role of expert evidence in construing a patent is limited, and is only to place the court in the position of a person acquainted with the state of the art as at the priority date. The trial judge erred in relying so heavily on the views of the experts at trial, and therefore failed to give separate consideration to the construction of the patent.

The Full Court rejected Rokt’s submission that the trial judge’s findings were of fact that ought not be disturbed by the Full Court, holding that construction was a legal exercise.

The correct approach

The correct approach backed by the Full Court involves characterising the invention claimed in order to determine whether or not it is in substance a manner of manufacture. This is to be determined by a careful review of the specification and construing whether the invention as described and claimed is in substance anything more than a scheme that utilises a computer as a generic intermediary.

It was not in dispute that mere schemes are not patentable, nor that ‘an artificially created state of affairs of economic significance’ is in every case determinative of patentability.

Notably, contrary to the current examination practice outlined in the Patent Examiner’s Manual, the Full Court warned against a review of the common general knowledge to determine whether a computer was being used for basic, well known functions – but rather, common general knowledge should only be used to the extent necessary to construe the specification. It remains to be seen whether the Patent Examiner’s Manual will be amended to reflect the court’s warning against reviewing common general knowledge in construing patents.

The Full Court observed, construing claim 1 in the light of the specification, that:

  • the invention did not claim the real time targeting of advertising, or contemporaneous evaluation of user attributes;
  • the invention aims to enhance consumer engagement levels by providing an intermediate engagement offer, which is properly characterised as a marketing scheme. Nothing in the specification suggests that the computer is being used other than as a vehicle for implementing the scheme. The general descriptions of the hardware architecture in the specification appeared to influence the Full Court’s finding on this point; and
  • claim 1 does not contain any integer that serves to characterise the invention by reference to the implementation of the scheme by a computer in anything other than a generic way.

The Full Court overturning the trial decision noted a computer-implemented invention that would otherwise not be patentable, does not become patentable subject matter because it can only be carried out by a computer.

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