By Brian Craig, J.D.
Patent claims relating to rules for playing a dice game are not covered by a patent-eligible concept, the U.S. Court of Appeals for the Federal Circuit has ruled. In affirming the Patent Trial and Appeal Board’s decision to deny a patent application, the Federal Circuit held that the claims are drawn to the abstract idea of rules for playing a dice game and lack an inventive concept sufficient to transform the claimed subject matter into a patent-eligible application of that idea. Circuit Judge Mayer wrote a concurring opinion that dice, card, and board games can never qualify as patent ineligible subject matter because they endeavor to influence human behavior rather than effect technological change (In re Marco Guldenaar Holding B.V., December 28, 2018, Chen, R.).
Marco Guldenaar Holding B.V. filed U.S. Patent Application No. 13/078,196 (the ’196 patent application). The ’196 patent application entitled "Casino Game and a Set of Six-Face Cubic Colored Dice" 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." The Board found the patent claims are patent-ineligible subject matter under 35 U.S.C. § 101 applying the two-step framework laid out in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). The patent applicant appealed to the Federal Circuit.
Alice inquiry. The Federal Circuit first examined whether the patent claims cover an abstract idea in the Alice inquiry. First, the court determines whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. Second, the court examines the elements of the claim to determine whether it contains an "inventive concept" sufficient to transform the claimed abstract idea into a patent-eligible application. The court previously held that a method of conducting a wagering game using a deck of playing cards was drawn to an abstract idea. In re Smith, 815 F.3d 816 (Fed. Cir. 2016). Here, the claimed method of playing a dice game, including placing wagers on whether certain die faces will appear face up, is closely related to Smith which directed to a method of conducting a wagering game. The only distinction is the probabilities are based on dice rather than on cards. Given the strong similarities to the ineligible claims in Smith, the applicant’s claims are drawn to an abstract idea.
The Federal Circuit also rejected the argument that the claimed method of playing a dice game cannot be an abstract idea because it recites a physical game with physical steps. The abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps. The court found that the claims are drawn to the abstract idea of rules for playing a dice game and lack an "inventive concept" sufficient to "transform" the claimed subject matter into a patent-eligible application of that idea. Accordingly, the Federal Circuit affirmed the Board’s rejection of the patent application.
Representative claims. The Federal Circuit also examined whether the Board improperly treated claim 1 as representative of the rejected claims. Rule 41.37(c)(1)(iv) found in 37 C.F.R. § 41.37 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. For an applicant to receive separate consideration by the Board for each of its appealed claims, an applicant’s appeal brief must contain substantive argument beyond a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Here, the Board reasonably grouped all of the claims together. As such, the Board did not err in treating claim 1 as representative of the rejected claims.
Concurring opinion. Circuit Judge Haldane Robert Mayer wrote a seven-page concurring opinion where he agreed that the claims at issue in the present case are patent ineligible while also making two separate points. First, 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. Second, claims directed to dice, card, and board games can never meet the Section 101 threshold because they endeavor to influence human behavior rather than effect technological change. While new machines and mechanized processes can potentially be patent eligible, ideas about how to improve or influence human thought and behavior fail to pass Section 101 muster. While games may enhance leisure hours, they contribute nothing to the existing body of technological and scientific knowledge. Games should, therefore, be deemed categorically ineligible for patent, in Judge Mayer’s view.
This case is No. 17-2465.
Attorneys: Christian D. Ehret (Webb Law Firm) for Marco Guldenaar Holding B.V. Mary L. Kelly for the USPTO.
Companies: Marco Guldenaar Holding B.V.
MainStory: TopStory Patent TechnologyInternet FedCirNews
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