On March 10 2016 the Federal Circuit in In re: Smith upheld the Patent Trial and Appeals Board's rejection of patent claims for a variation of the card game blackjack. The court agreed that the method claim was directed to the abstract idea of conducting a wagering game. The court noted that the new game merely used a standard deck of cards and that claims directed to conducting a game using a new or original deck of cards could potentially survive the Alice abstract subject-matter test.

Claim 1 of the patent application specified providing at least one deck of physical playing cards, and then proceeding to play the blackjack variation according to eight detailed steps. The court found that the game's rules were rules for conducting a wagering game, and therefore were comparable to other "fundamental economic practices" found to be abstract. The court also found that there was no "inventive concept" in the shuffling and dealing of physical playing cards.

Ironically, the US Patent and Trademark Office (USPTO) allowed Claim 21 of the patent application, which was directed to the same method but used a video gaming system that used a processor, rather than real cards and a dealer. Thus, according to the USPTO, a method carried out on a computing device is not abstract, while carrying out the same method with a physical deck of cards is too abstract.

The applicant had also argued that the USPTO's 2014 Interim Guidance on Patent Subject Matter Eligibility exceeded the scope of the Supreme Court's Alice decision. However, the court declined to address this argument as it was not properly before the court, and in any event, the guidance was not binding on it.

Interestingly, the court noted in passing that claims directed to conducting a game using a new or original deck of cards could potentially survive the Alice abstract subject matter test, which the USPTO acknowledged during oral argument. However, the court did not explain how a set of game rules using a modified deck of cards would be any less abstract than a set of game rules using a standard deck of cards.

The court appeared to require the "inventive concept" to be present in some physical or tangible element of the invention. For now, patent applicants in the United States should be careful to focus on the physical or tangible elements of any "inventive concept" as much as possible.

W Edward Ramage

This article first appeared in IAM. For further information please visit www.iam-media.com.