Do not pass go. Do not collect $200. This is the message often heard when claims are held to cover patent ineligible laws of nature, natural phenomena or abstract ideas. Once the claim is placed in the patent-ineligible box, additional claim elements must provide an inventive concept sufficient to transform the claims into patent-eligible subject matter. In re Smith (Federal Circuit, March 10, 2016) discusses this analysis.
Patent Application No. 12/912,410 (entitled “Blackjack Variation”) claims a method of conducting a wagering game utilizing real or virtual standard playing cards. As the title suggests, the method in many respects mirrors the rules of traditional Blackjack. However, the claimed method differs from traditional Blackjack as the variation replaces the “blackjack” with a “natural zero” (defined as the first two cards of the hand being a pair of 5’s, 10’s, jacks, queens or kings) and employs a different scoring system. The method also includes traditional and well-known elements, such as using standard playing cards, placing a wager, shuffling and dealing cards, and using a dealer.
Under 35 U.S.C. § 101, patent-eligible subject matter is defined as any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, with the caveat that laws of nature, natural phenomena, and abstract ideas are not patent eligible. The purpose of the exceptions is to prevent patents from preventing access to “the basic tools of scientific and technological work.” The examiner rejected the claims as directed to patent-ineligible subject matter under 35 USC § 101, taking the position that the claims were directed to an abstract idea as the claims attempted “to claim a new set of rules for playing a card game.”
The Patent Trial and Appeal Board upheld the examiner’s rejection applying the two-step test set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. v. CLS Bank International, which requires:
- determining whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea; and
- examining the claim elements to determine if an inventive concept is present that is sufficient to “transform” the claimed patent-ineligible concept into a patent-eligible application.
Applying the first step, the board determined that the set of rules for conducting a wagering game was an abstract idea (in other words, the claims covered mental steps that could be carried out by a human using pen and paper). Applying the second step, the board concluded that the additional elements (shuffling cards, dealing cards, placing bets and the like) were conventional and well-known and therefore not sufficient to transform the claimed abstract idea into a patent- eligible concept.
The Federal Circuit affirmed with little discussion. The court reasoned that the rules for conducting a wagering game as claimed were similar to concepts declared patent ineligible as abstract ideas in prior cases (Alice Corp., considering a method of exchanging financial obligations; Bilski, considering a method of hedging risk; Ultramercial Inc. v. Hulu, LLC, considering methods for distributing copyrighted products; IP Techs., Inc. v. Amazon.com, Inc., considering an offer-based price optimization abstract; and Planet Bingo, LLC v. VKGS LLC, considering methods of managing a game of bingo) and that the additional elements of the claims were purely convention and failed to transform the claims patent-eligible subject matter.
The opinion made it clear that the decision should not be interpreted to mean that all gaming invention are patent ineligible under § 101. While giving little detail on what would be required to transform an abstract claim for conducting a game into patent-eligible subject matter, the discussion would seem to require a novel/non-obvious physical article (for example, a new deck of playing cards or game pieces) or some type of additional feature to save the claim.
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.
The examiner allowed claims 20 and 21, which were directed to a “Method for conducting a wagering game on a video gaming system comprising a processor, a video display and a player input controls…” where the process processor took the place of the physical dealer. No particular parameters regarding the processor or other components were claimed. In the reasons for allowance, the examiner stated the recitation of the video gaming system “clearly recites a machine” and “clearly avoids a 101 non-statutory rejection.” One wonders whether the video gaming system limitations really adds anything of “substance to the underlying abstract idea.” In Alice the Court made it clear that “merely requir[ing] generic computer implementation” is not sufficient to move an otherwise ineligible claim into 101 eligible territory. The same logic was also applied in Ultramercial.
Two recent gaming patents seem to be consistent with the requirement for a new/non-obvious physical article. In U.S. Patent 9,220,973 (issued December 29, 2015), the claims were directed to an educational board game and included a novel “path advance device” for determining the number of spaces a player can move during a turn. Likewise, U.S. Patent No. 9,286,747 (issued March 15, 2016) claimed a method for implementing a virtual card game and included requirements that the user perform physical acts (such as shooting a game gun at the display) to add cards to his/her hand in order to advance play.
Unfortunately, In re Smith does not provide an extensive discussion of what types of activities qualify as “inventive concepts” sufficient to transform the claims into patent-eligible subject matter. However, the opinion is consistent with prior cases and reinforces that when claiming abstract ideas (whether methods for game play, methods for organizing human activity or fundamental economic practices), the claims will be required to include some novel “post-solution activity” or “inventive concept” in order to be held patent eligible.