In the latest word from the Federal Circuit on the effect of Alice on method claims, the Federal Circuit in In re Smith affirmed a Patent Trial and Appeal Board decision holding claims that recite a method of conducting a wagering game invalid for being directed to an abstract idea under 35 U.S.C. § 101. The court held that the claims of the patent application at issue were "directed to rules for conducting a wagering game," which is similar to the fundamental economic practices found abstract by the Supreme Court in Bilski and Alice. The applicants presented an argument that the claims were not abstract because they required shuffling and dealing of physical playing cards, but the court rejected those as "purely conventional" activities.
In an interesting twist, the court noted, on page 6 of the opinion, that it "is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice." Considering that the patent application at issue claimed a method for conducting a wagering game, it would seem that the particular type of cards being used would be irrelevant to the execution of the method.
The court appears to imply that if a method recites performing actions with a novel deck of cards, those steps could render an otherwise abstract idea patent eligible. However, why would novel actions performed with a novel object have a different effect on method claims than novel actions performed with a standard object? And, conversely, why would non-novel actions performed with a novel object have a different effect on method claims than non-novel actions performed with a standard object?
In an area of law that is already engulfed in so much confusion about what exactly are the metes and bounds of the abstract idea exception, any guidance from the courts is eagerly awaited by patent practitioners and applicants alike. However, it appears that even when the court attempts to provide some clarity, new questions arise about its intended meaning.