Federal Circuit Relies on Printed Matter Doctrine in Affirming Examiner’s Rejection of Claims Under 35 U.S.C. § 101

The United States Court of Appeals for the Federal Circuit recently issued a ruling affirming the Patent Trial and Appeal Board’s (“Board”) rejection of claims in a pending application under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. See In re Marco Guldenaar Holding B.V., No. 2017-2465, 2018(Fed. Cir. Dec. 28, 2018) (Before Chen, Mayer, and Bryson, Circuit Judges) (Opinion for the court, Chen, Circuit Judge) (Concurring opinion, Mayer, Circuit Judge).

In 2010, Marco Guldenaar Holding B.V. (“Marco”) filed the provisional application from which U.S. Patent Application No. 13/078,196 claimed priority. The ’196 patent application relates to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.” During prosecution of the ’196 application, the examiner rejected claims 1-3, 5, 7-14, 16-18, and 23-30 as being directed to patent-ineligible subject matter under § 101. The examiner concluded that the claims were directed to the abstract idea of “rules for playing a game,” which fell within the realm of “methods of organizing human activities.” The examiner further found that the claims were unpatentable for obviousness in view of U.S. Patent No. 4,247,114 (Carroll) over “matters old and well known to dice games,” applying the printed matter doctrine.

The Board affirmed both rejections on appeal after applying the two-step framework laid out in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). It determined that claim 1 was directed to the abstract idea identified by the examiner and that the steps in claim 1 lacked an “inventive concept” sufficient to transform the claimed abstract idea into patent-eligible subject matter. Appellant appealed to the Federal Circuit.

The Court began its analysis with step one of Alice and compared the claims of the ’196 application to those in a similar case in which the Court found claims were directed to patent-ineligible subject matter, In re Smith, 815 F.3d 816 (Fed. Cir. 2016).  In Smith, the Court held the claimed “method of conducting a wagering game” using a deck of playing cards was drawn to an abstract idea. Here, the Court found that Marco’s claimed the “method of playing a dice game,” including placing wagers on whether certain die faces will appear up, was also directed to a method of conducting a wagering game, “with the probabilities based on dice rather than on cards.” Thus, Marco’s claims were also drawn to an abstract idea.

Marco argued that the Patent Office improperly uses the label “methods of organizing human activities” as a “catch-all abstract idea” and that the Board improperly uses the phrase as an “apparent shortcut.” Although the Court agreed that the phrase “can be confusing and potentially misused,” it stated that “where the Patent Office further articulates a more refined characterization of the abstract idea (e.g., ‘rules for playing games’), there is no error in also observing that the claimed abstract idea is one type of method of organizing human activity.”

Under Alice step two, the Court determined that there was no inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. The claims at issue recite the steps of placing a wager, rolling the dice, and paying a payout amount if at least one wagered outcome occurs. Marco did not dispute that any of these were conventional; rather, Marco argued that “the specifically-claimed di[c]e,” which have markings on one, two, or three die faces, are not conventional and their recitation in the claims amounts to “significantly more” than the abstract idea. The Court, however, agreed with the Examiner that the markings on the dice constitute printed matter, and the Court has generally found printed matter to fall outside the scope of § 101:

“Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight because such information is not patent eligible subject matter under 35 U.S.C. § 101.” Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018). Each die’s marking or lack of marking communicates information to participants indicating whether the player has won or lost a wager, similar to the markings on a typical die or a deck of cards. Accordingly, the recited claim limitations are directed to information.

Marco also contended that its claimed method of playing a dice game could not be an abstract idea because it recites a physical game with physical steps. The Court rejected this argument “because the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.” Since the only arguably unconventional aspect of the recited method of playing a dice game was found to be printed matter, thus falling outside the scope of § 101, the rejected claims did not recite an “inventive concept” sufficient to “transform” the claimed subject matter into a patent-eligible application of the abstract idea.

Finally, Marco argued that the Board improperly treated claim 1 as representative of the rejected claims. The Court rejected this argument, relying on 37 CFR 41.37(c)(1)(iv), which specifies that when an applicant does not provide separate arguments for different patent claims, the Board may select a single claim from a group and decide the appeal on the basis of the selected claim alone. Marco’s brief to the Board identified only a few additional limitations in a subset of dependent claims, without any explanation as to why the additional limitations rendered the claims patent eligible. The Board therefore reasonably grouped all claims together and did not err in treating claim 1 as representative of Appellant’s rejected claims.

Judge Mayer agreed that the claims at issue were patent-ineligible but wrote a concurring opinion to make two points. First, Judge Mayer disagreed with the majority opinion that the patent eligibility inquiry “may contain underlying issues of fact.” Rather, he contended that subject matter eligibility under § 101 is a pure question of law and an issue that should be resolved “at the earliest stages of litigation, or even before, as in this case from the PTO.” According to Judge Mayer, “[i]njecting factual inquiries into the section 101 calculus will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than ‘promote[d] the Progress of Science and useful Arts,’ U.S. Const. art. I, § 8, cl. 8.” Second, Judge Mayer argued that claims directed to dice, card, and board games can never meet the § 101 threshold because they endeavor to influence human behavior, rather than effect technological change.

Take Away

A patent applicant cannot rely on printed matter, e.g., labels on cards/dice, as the only unconventional feature claimed to establish that the claimed invention contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application.

 

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The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 7 Comments comments. Join the discussion.

  1. Anon January 10, 2019 10:33 am

    A rather obvious contrast is called for in viewing this article (and case) with the “Christmas gift” from Mr. Quinn sharing a history of patents for famous games.

  2. mike January 10, 2019 12:19 pm

    This is not printed matter. This is hardware programming that converts three mechanical random number generators which give six results with equal 1:5 probability, into three mechanical random number generators, one of which gives two results with a 1:5 probability, one of which gives two results with a 1:2 probability, and one of which gives two results with 1:1 probability. This should have been rejected on 103 grounds, because six sided dice having more than one identical side are well known in the prior art, and the game is intended use.

  3. Eric Berend January 11, 2019 6:14 am

    Let us not whistle past the graveyard.

    ‘According to Judge Mayer, “[i]njecting factual inquiries into the section 101 calculus will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than ‘promote[d] the Progress of Science and useful Arts,’ U.S. Const. art. I, § 8, cl. 8.” ‘.

    These idiots actually profess to believe this nonsense. U.S. inventors are not merely dismayed by the rampant betrayal of the very Constitutional imperative cited by the patent-hating antagonist Mayer – we are outraged, furious, and now deeply despise the whole U.S. patent system with a loathing the intensity of which is quite difficult to describe.

    When sham sycophants resembling black-robed judges in the CAFC ride shotgun for IP-pirates, destroying inventors’ Constitutional opportunities, it promotes and sustains an apparatus of unconscionable inequity of bargaining power between inventors and infringers.

    What a shell game. The tone-deaf obdurate adherence by a U.S. Appellate Court Judge to a criminal racket fostered by years of illicit infringer-friendly influences, offers nothing more than an immense stench of a conceited sham. Any inventor with any notion of dignity and self-respect, has to suppress the impulse to vomit, in response. After all, when diarrhea is what comes out of a Judge’s mouth, the reaction is difficult to suppress.

    So long as treacherous agents of criminal conspirators such as “Judge” Mayer exist and preside over the future of U.S. inventors’ fortunes, the American inventor is dead. and there will NEVER be justice in U.S. patent law.

    My lighting and power inventions will go to the grave with me. ANY other outcome, in unconscionable. The judge-legislator-attorney overclass considers this to be a small price to pay, destroying the economic motivation for inventors to participate in creating technology to benefit the U.S., now and in the future.

    China will teach you all, how very foolish you in the legal community of U.S. patent law, truly are. Aside from Mr. Gene Quinn, Judge Rader, Director Iancu and others very much in the minority therein; this forum will not print the words to describe my opinion of you. In fact, such words may not exist – the magnitude of your treacherous evil begs adequate description in the English language. Perhaps Swahili, Sanskrit or Mandarin Chinese can come closer, in this sad regard.

  4. B January 14, 2019 12:39 am

    Excellent article. The printed matter doctrine used to be part of s103, yet the brain trust at the CAFC can’t see that they’ve made s101 into a distorted s103 – no evidence or coherent argument necessary.

    As to the “functional” relationship issue, there is a functional relationship between the character / odds represented by the die and the game in general.

    @ Eric B. “According to Judge Mayer, “[i]njecting factual inquiries into the section 101 calculus will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than ‘promote[d] the Progress of Science and useful Arts,’”

    Golly, we can’t use evidence because using evidence to address a factual inquiry is bad. Judges are presumed experts in nothing but the law, but Alice/Mayo puts that one presumption in question.

    Finally, can anyone point out what exactly is preempted in the claims at issue?

    IMHO, the problem isn’t appending “conventional” steps, the problem is appending steps that are inherently necessary to practice the abstract idea.

  5. B January 14, 2019 12:42 am

    When a claim does not merely recite an abstract idea and contains detailed limitations that are not inherently necessary to practice the abstract idea, Alice/Mayo is inappropriate. In these circumstances, Title 35 U.S.C. § 103 is the appropriate tool, and the well-developed nonobviousness standard (which may rely on a mere suggestion found in single disclosure and/or common sense) under § 103 as promulgated in KSR v. Teleflex, is far less burdensome to the courts than the “well-known, routine and conventional” standard of Alice Corp.

  6. Anon January 14, 2019 9:44 am

    B,

    Please define “abstract.”

    😉

  7. B January 14, 2019 1:22 pm

    @anon

    Before Alice Corp. it was at least plausible

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