The Court of Appeals for the Federal Circuit, on the last day of the court’s calendar year, December 28, 2018, ruled on In re Marco Guldenaar Holding B.V.,[1] in what is the last 2018 case discussing patent-eligibility under 35 U.S.C. §101. The ruling is not very groundbreaking, although it does emphasize that gaming methods are essentially abstract ideas, and therefore, patent-ineligible concepts. Further, the ruling is interesting because of Judge Mayer’s retort against the Berkheimer decision and its impact on introducing factual evidence into the §101 analysis.
Marco Guldenaar owns U.S. Patent Application No. 13/078,196 (‘196 application), entitled “Casino Game and Set of Six-Face Cubic Colored Dice,” related to casino gambling “where a participant attempts to achieve a particular winning combination of subsets of the dice.”
Claim 1 was deemed representative:
1. A method of playing a dice game comprising:
providing a set of dice, the set of dice comprising a first die, a second die, and a third die, where only a single face of the first die has a first die marking, wherein only two faces of the second die have an identical second die marking, and wherein only three faces of the third die have an identical third die marking;
placing at least one wager on at least one of the following: that the first die marking on the first die will appear face up, that the second die marking on the second die will appear face up, that the third die marking on the third die will appear face up, or any combination thereof;
rolling the set of dice; and paying a payout amount if the at least one wager occurs.
During prosecution, the Examiner rejected the claims as directed to the abstract idea of rules for playing a game, which were merely methods of organizing human activity, and therefore, patent-ineligible under §101. The PTAB affirmed on appeal, and Guldenaar appealed the decision further to the Fed Circuit.
The Fed Circuit panel was composed of Judges Chen, Mayer, and Bryson, with Judge Chen writing for the court. Judge Mayer concurred.
Patent-eligibility under §101 is a two-step analysis. First, in step 1, the claims must be analyzed to determine if they are directed to patent-ineligible concepts, like laws of nature, natural phenomena, or abstract ideas.[2] Then, in step 2, if yes, then the claims are analyzed either individually or as a whole to determine if they transform the nature of the claim into a patent-eligible concept.[3]
Judge Chen first noted that this case parallels In re Smith,[4] another gaming method case which was found patent-ineligible. In Smith, the Fed Circuit upheld a determination that a wagering game method was merely an abstract idea. Similarly, here, the method of playing a dice game by placing wagers on how the dice would appear face up was also an abstract idea.
Preemption is the underlying concern behind the abstract idea exception, but, at the same time, the Supreme Court has made clear that merely appending conventional steps to an abstract idea is not enough for patent eligibility.
He wrote:
Preemption is the underlying concern behind the abstract idea exception, but, at the same time, the Supreme Court has made clear that merely appending conventional steps to an abstract idea is not enough for patent eligibility. The claims here recite the steps of placing a wager, rolling the dice, and paying a payout amount if at least one wager outcome occurs. Just as the claimed steps of shuffling and dealing playing cards fell short in Smith, . . . the claimed activities here are insufficient to recite an inventive concept.
Further, Judge Chen noted that merely claiming specifically-claimed dice with markings in the recitation is not enough transform the claim into “something more” than just the mere abstract idea. The markings would constitute printed matter, and under the printed matter doctrine (MPEP 2111.05), the scope of which falls outside §101 protections.
While Judge Mayer concurred in the final judgment, he pointedly disagreed that the §101 analysis is one of both law and fact. He took specific issue to the recently decided Fed Circuit case in Berkheimer, which first enunciated a factual inquiry into the §101 analysis.[5] He argued that the Supreme Court, through its §101 rulings in Mayo,[6] Alice,[7] and Myriad Genetics,[8] has consistently treated §101 patent-eligibility as a question of law, and the Court rejected efforts to make patent-eligibility as a factfinding mission. The Berkheimer decision was a deviation from Court precedent when it held statements made in the prosecution history could raise genuine issues of material fact to question whether claimed elements were well-understood, conventional, or routine.[9] In Judge Mayer’s belief, patent-eligibility should be analyzed whether the invention is a new machine or mechanical process (patent-eligible), or improvements of human thought or behavior (patent-ineligible). This is just a rehash of the machine-or-transformation test (MPEP 2106.05(b)), the former test prior to Alice that is now incorporated into the Alice analysis.
As mentioned above, while not a ground-breaking §101 case, Guldenaar does emphasize that gaming methods are just abstract ideas. It is also useful to note Judge Mayer’s half-concurrence, in that he unequivocally believes the patent-eligibility analysis is a law-based analysis only; facts are irrelevant. There is an obvious split in the §101 ideology within the Fed Circuit and it will be interesting how future panels deal with §101 in light of Berkheimer.
[1] ___F.3d___ (Fed. Cir. 2018) (slip op.).
[2] See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354-55 (2014).
[3] Id.
[4] See 815 F.3d 816 (Fed. Cir. 2016).
[5] See Berkheimer v. HP Inc., 890 F.3d 1369, 1377 (Fed. Cir. 2018) (en banc denied).
[6] See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-80 (2012).
[7] See Alice, 134 S. Ct. at 2354-60.
[8] See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 590-96 (2013).
[9] See Berkheimer v. HP Inc., 881 F.3d 1360, 1369-70 (Fed. Cir. 2018).