The “ROKT” case sheds light on how the court will address manner of manufacture issues for computer implemented methods. In Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988, a computer implemented business method was found to be patentable subject matter.
ROKT Pte Ltd is a digital referral marking company that combines engagement technology, advertising software, messaging and real-time analytics to offer a platform that matches engaged customers with marketing offers.
On 13 March 2013, Rokt applied for grant of a patent titled “A Digital Advertising System and Method” (Application No.2013201494, Priority date 12 December 2012). During 2013 to 2017, the patent underwent amendments and re-examination and it was decided that the claims did not define patentable subject matter. The Delegate of the Commissioner had decided that the patent should not proceed to grant. Asserting that the claimed invention disclosed a manner of manufacture as per all the principles set out in NRDC, CCOM, Research Affiliates and RPL, the applicant appealed this decision.
How the system works
When a user engages with a webpage displaying publisher content, they can be led into an “engagement journey” which involves engaging with an “engagement offer” that is contextually relevant to the consumer and subsequently being exposed to advertisements. A computer readable script (“widget script”) is placed within publisher content on a website. The widget script gathers and communicates engagement data to an advertisement system and then to generate and display engagement journey objects for the consumer based on e.g. user attributes. Objects may include “offers, assets, advertisements and modules”. The engagement data and behavioural metrics gathered by the widget script and stored in a tracking database (of the advertisement system) are used to generate a tailored engagement journey for the consumer based on previous engagement with objects. An engagement objects database stores engagement objects. An engagement engine and a ranking engine in communication with respective tracking and objects databases are implemented to generate the tailored consumer engagement journey. The highest ranking objects are selected for the engagement by a ranking algorithm which ranks objects based on an engagement and revenue score.
Rokt’s advertising system was considered to be a computerised business method. While business methods are not patentable, “[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation”: RPL Central at [96] (emphasis added). This requires “some ingenuity in the way in which the computer is used”: RPL Central at [104]. It is not a patentable invention “to simply ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions”: RPL Central at [96].
The judge agreed with the expert that the computer-implemented method provided a “single platform in which user engagement data could be coupled with transactional data and user context data to provide a personalised ranking of engagement offers to the user.”
In deciding the matter, expert evidence was heavily relied on as to the state of the art of digital advertising technology as at December 2012. The appellant’s expert, whom the judge considered to be more compelling had an academic focus on computational, algorithmic and programmatic methods for analysis of natural language text and other digitally-represented data.
The judge considered that the difference in material between the applicant’s expert and respondent’s expert was related to a level of detail and claimed significance of distinctions between prior art and ROKT’s computer implemented method. The judge also considered the respondents to have focussed on discrete differences or distinctions as opposed to the claim or claims as a whole and as a matter of substance. The judge warned that focusing on individual elements being known as at December 2012 took away from viewing the invention as a whole e.g. a combination of components being put together in an innovative way.
The “substance” of the invention
The judge accepted expert evidence presented and found that the substance of the invention was to “introduce a dynamic, context-based advertising system, introducing a distinction between an engagement offer, without a direct advertising benefit, and an advertisement designed to lead directly to the sale of a product”.
The technical problem with a technical solution
The respondent had submitted that the specification only defined a business problem but not a technical problem. The identified business problem was how to attract users visiting a publisher’s website to ultimately engage with an advertiser. The identified technical problem lay in how to solve this business problem through computer technology i.e. how to design computer programs to display advertisements in a way that that the user was compelled to engage with them while visiting a web page unrelated to the advertiser.
The judge considered that the invention attempted to solve this technical problem by presenting an engagement offer to the user, modifying the publisher’s website in such a way as to implement in a browser the engagement offer, implementing software for selecting engagement offers and advertisements based on previous interactions with the system by the user and similar users and by the system interacting with a widget in the web browser in real time.
Role of the computer – intermediary or integral?
The expert noted in an affidavit that a “computer system” comprising hardware and software that implemented the method in the patent application was a new, more improved “computer system” for delivering online digital advertising i.e. that the computer system was a combination of hardware and software and that the innovation could lie in the software component.
It was considered that the computer was integral to the performing of the invention and not merely an intermediary. It was held that the functions of gathering, manipulation, transmission to and use of data by an engagement engine to make context-sensitive decisions in real-time while the user was interacting with the website using a device, could only be achieved by computers. In summary the storage and data manipulation capabilities of computers at the speed at which it would be required to implement the invention made the computer integral to achieving the method.
Further, as the user must interact with a device or a computer with a screen and a widget be inserted into publisher’s content, a computer was considered to be inherently required to perform the method.
Steps that are foreign to the normal use of computers (as at December 2012)
While the method discloses some techniques that were known, the expert asserted and the judge agreed that the patent introduced a method having steps that were foreign to the normal use of computers as at December 2012. The judge found that ROKT’s advertising system combined known elements and new elements in a working combination that had never been achieved.
The judge considered new aspects to include “the concept and implementation of an engagement offer, the use of a widget to monitor continuously the user’s interaction with the website to determine when to display the engagement offer, the use of a widget to monitor the user’s interaction with the engagement offer, the offering of a choice to engage with or skip the engagement offer, and the monitoring of the user’s interaction with an advertisement to determine which subsequent advertisement to show were all new and innovative uses of computers.”
Takeaways
This case sheds further light on how the courts will approach matters relating to patentability of software related inventions, especially software-related business methods.
The careful selection of expert witnesses and the level of detail provided demonstrating in depth understanding of the subject matter was key to overcoming the patentable subject matter objections.
Articulating the substance of the invention in context of the state of the art and the technical problem and technical solution provided when responding to examination reports is likely important. It may also be useful to articulate the state of the art to distinguish the normal use of computers from foreign uses.
While this decision is certainly positive for software start-ups looking to protect their innovative software, the Delegate of the Commissioner has applied for leave to appeal this decision.
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