FEDERAL COURT OF AUSTRALIA I.G.T. (Australia) Pty Ltd v Aristocrat Technologies Australia Pty Ltd [2007] FCA 2009 LEAVE TO APPEAL – Patent application – decision final in effect – not clear beyond doubt that there was no error. Pfizer Corporation v Commissioner for Patents (1006) 155 FCR 578 I.G.T. (AUSTRALIA) PTY LTD AND ACRES GAMING, INC v ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD NSD 2147 OF 2007 BUCHANAN J 13 DECEMBER 2007 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NSD 2147 OF 2007 BETWEEN: I.G.T. (AUSTRALIA) PTY LTD First Applicant ACRES GAMING, INC Second Applicant AND: ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD Respondent JUDGE: BUCHANAN J DATE OF ORDER: 13 DECEMBER 2007 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. Leave is granted to the applicants to proceed upon the draft Notice of Appeal which is annexure A to the affidavit of John Michael Afaras filed 30 October 2007. 2. There be no order as to costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NSD 2147 OF 2007 BETWEEN: I.G.T. (AUSTRALIA) PTY LTD First Applicant ACRES GAMING, INC Second Applicant AND: ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD Respondent JUDGE: BUCHANAN J DATE: 13 DECEMBER 2007 PLACE: SYDNEY REASONS FOR JUDGMENT BUCHANAN J: 1 This is an application for leave to appeal against orders made by Allsop J on 9 October 2007 which accompanied a judgment given on that day (Aristocrat Technologies Australia Limited v IGT (Australia) Pty Limited [2007] FCA 1540). In that judgment his Honour found certain claims in a patent application made by the applicants (Australian Patent Application Number 748263) to be not novel in the light of another patent called the Bennett Patent (Australian Patent Number 633469). His Honour found that the patent application could not proceed to grant insofar as it contained the claims he found not to be novel. 2 The applicants seek leave to appeal for the purpose of challenging his Honour's finding that the Bennett Patent deprived the relevant claims of novelty. They propose to challenge each of two bases upon which his Honour found that the Bennett Patent deprived the claims of novelty. It is not necessary for the present application for me to descend into the detail of those matters. The present application for leave to appeal arises under s 158(2) of the Patents Act 1990 (Cth). It is not opposed. The principles to govern consideration whether leave should be granted in a case such as the present were recently stated by a Full Court of this Court in Pfizer Corporation v Commissioner for Patents (2006) 155 FCR 578, especially at paragraphs [7] to [12]. 3 In the present case it is argued that the refusal of leave would deprive the first applicant of the opportunity to obtain the grant of a patent conferring a broad monopoly. That is so because his Honour's decision is final for the applicants in the sense that, if they are not permitted to appeal, the patent application will not proceed to grant unless the claims are amended in accordance with his Honour's orders. The effect of such amendments would be to significantly narrow the scope of the claims. It is also argued that, as the proceedings before his Honour were conducted as a hearing de novo, his Honour's judgment represents the only consideration of the evidence and submissions to date by any tribunal, judicial or otherwise. 4 In any event, his Honour's judgment represents the first determination by any tribunal that the claims in question are not novel and the first judicial determination of any kind in relation to the patent application. Accordingly, it is argued, it cannot be said that it is 'clear, beyond doubt' that there was no error in his Honour's reasoning. I am satisfied that these are cogent arguments in support of the application for leave to appeal. I am fortified in that conclusion by the fact that there is no opposition to the application for leave to appeal. 5 Costs of the present application are not sought. 6 In the circumstances I will order that: (1) Leave to appeal be granted to the applicants to proceed upon the draft Notice of Appeal which is annexure A to the affidavit of John Michael Afaras filed 30 October 2007. (2) There will be no order as to costs. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Buchanan. Associate: Dated: 14 December 2007 Counsel for the Applicant: Mr C. Dimitriadis Solicitor for the Applicant: Spruson & Ferguson Lawyers Solicitor for the Respondent: Gilbert + Tobin Date of Hearing: 13 December 2007 Date of Judgment: 13 December 2007