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.
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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