The Federal Circuit recently issued a decision in In re Marco Guldenaar Holding B.V., ruling the claims at issue were directed to the abstract idea of rules for playing a dice game. Finding that the recited elements did not amount to significantly more than that abstract idea itself, the court found the claims ineligible for patent protection.
Appellant Marco Guldenaar Holding B.V. appealed a PTAB decision holding the claims of U.S. Patent Application No. 13/078,196 (the ’196 application) ineligible under 35 U.S.C. § 101. The ’196 application is entitled “Casino Game and a Set of Six-Face Cubic Colored Dice” and includes representative claim 1 that recites, inter alia, providing a first die, a second die, and a third die each having a certain marking, placing a wager on at least one of a set of outcomes, and paying a payout amount accordingly.
Marco argued that the Board’s characterization of the claimed method as a method of organizing human activities was simply a “catch-all” improperly used by the Board as an “apparent shortcut.” While the court agreed that simply characterizing claimed methods as methods of organizing human activity can be confusing and potentially misused, it nevertheless determined that the claims—which it more accurately characterized as directed to “rules for playing a dice game”—were directed to a particular method of organizing human activity and, therefore, abstract.
Marco contended that specifically-claimed die having markings on one, two, or three die faces were not conventional, and accordingly that the claims recite “significantly more” than the asserted abstract idea. However, the court concluded that such markings amount to printed matter, which falls outside the scope of § 101, reasoning that each die’s marking merely communicates information to participants and is not functionally related to the substrate of the dice.
Finally, Marco asserted that the claimed method recites a physical game with physical steps, and therefore cannot be an abstract idea. The Federal Circuit disagreed, noting that the abstract idea exception does not turn solely on whether the claimed invention recites physical versus mental steps. The court thus concluded that the claims are directed to an abstract idea without significantly more, and are therefore not subject matter eligible.
In his concurrence, Judge Mayer opined that “subject matter eligibility under 35 U.S.C. § 101 is a pure question of law, one that can, and should, be resolved at the earliest stages of litigation.” Judge Mayer, in his opinion, disagrees with the court’s earlier determination that many § 101 inquiries may contain underlying issues of fact. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
In Judge Mayer’s view, the “fault line for patent eligibility generally runs along the divide between man and machine.” Judge Mayer, however, does not attempt to reconcile this view with certain of the court’s previous rulings on patent eligibility, including the patent-eligible business-oriented website from DDR Holdings, LLC vs. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Nevertheless, as certain hybrid man-machine technologies, such as machine learning concepts and autonomous vehicle applications, become more prevalent, it will be worth monitoring whether and how the subject matter eligibly line develops or is modified.