In the poker game of life, the USPTO is the rake.

MARCH 16, 2016 / DAVID / COMMENTS OFF ON IN THE POKER GAME OF LIFE, THE USPTO IS THE RAKE.

No new card games are patent-eligible without the invention of a new deck

 

On October 26, 2010, two enterprising individuals from New Jersey filed a patent application with the United States Patent and Trademark Office for a “Blackjack Variation.”[1] The Smiths sought to acquire patent rights to a new casino game they called “Pacific Rim Blackjack.” It appears that these inventors created a card game variant that merges the concepts of blackjack with Baccarat. The application claims that “casinos are in constant need of new games of chance to retain and attract patrons.” Additionally, the patent application asserts that existing games of chance such as blackjack, Three-Card Poker™, Baccarat, and Pai Gow are “popular” but “suffer from drawbacks.”

Due to the applicants’ unprovoked attack on the greatness that is Pai Gow poker, the USPTO rejected the patent application in whole. Well, okay, the patent examiner and later the Patent Trial and Appeal Board (PTAB) actually rejected the application on grounds that the alleged invention is “abstract” and therefore not patent eligible subject matter. The inventors appealed this decision and on March 10, 2016, the Federal Circuit affirmed.[2] Though the interesting part of the decision is not the rejection of the application itself – it was the Federal Circuit’s rationale and hints at the types of card games that might actually be patentable.

Limitations on Patentability

The United States Constitution provides the backbone for all of copyright and patent law by allowing “for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”[3] Particularly, with regard to patents, while “inventors” are entitled to exclusive rights – the alleged inventor must first demonstrate that there is actually a patentable invention. 35 U.S.C. § 101 provides that any “new and useful process, machine, manufacture, or composition of  matter, or any new and useful improvement thereof, may obtain a patent…”

One of the limitations to patentable subject matter is that the invention cannot be “abstract.” For example, you cannot patent E=mc2. We apologize for the inconvenience, Mr. Einstein.[4] Law of nature, natural phenomena, and abstract ideas are simply not patentable according to the Supreme Court.[5] These laws of nature are considered discoveries, not inventions. How does this apply to a simple card game though? The recent Supreme Court cases of Mayo, Bilski v. Kappos,[6] and Alice Corp. v. CLS Bank International[7] have provided a series of rules and guidelines for determining what is and is not “abstract” in the patent world.

Two-Step Test for “Abstract” Ideas

In particular, through Mayo and Alice, there is now a two-step test for making legal determinations on the alleged “abstract” nature of patents and their claims.  First, the Court is to determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea.[8] Next, the Court “examine[s] 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.”[9]

 

10983Black_Jack

The Federal Circuit applied Mayo, Bilski, and Alice to the claims set forth by the “Blackjack Variation” patent application. While this patent application included three independent claims, the Court focused on Claim 1, which recites:

A method of conducting a wagering game comprising:

a) a dealer providing at least one deck of i) physical playing cards and shuffling the physical playing cards to form a random set of physical playing cards;

b) the dealer accepting at least one first wager from each participating player on a player game hand against a banker’s/dealer’s hand;

c) the dealer dealing only two cards from the random set of physical playing cards to each designated player and two cards to the banker/dealer such that the designated player and the banker/dealer receive the same number of exactly two random physical playing cards;

d) the dealer examining respective hands to determine in any hand has a Natural 0 count from totaling count from cards, defined as the first two random physical playing cards in a hand being a pair of 5’s, 10’s, jacks, queens or kings;

e) the dealer resolving any player versus dealer wagers between each individual player hand that has a Natural 0 count and between the dealer hand and all player hands where a Natural 0 is present in the dealer hand, while the dealer exposes only a single card to the players;

f) as between each player and the dealer where neither hand has a Natural 0, the dealer allowing each player to elect to take a maximum of one additional card or standing pat on the initial two card player hand, while still having seen only one dealer card;

g) the dealer/banker remaining pat within a first certain predetermined total counts and being required to take a single hit within a second predetermined total counts, where the first total counts range does not overlap the second total counts range;

h) after all possible additional random physical playing cards have been dealt, the dealer comparing a value of each designated player’s hand to a final value of the banker’s/dealer’s hand wherein said value of the designated player’s hand and the banker’s/dealer’s hand is in a range of zero to nine points based on a pre-established scoring system wherein aces count as one point, tens and face cards count as zero points and all other cards count as their face value and wherein a two-digit hand total is deemed to have a value corresponding to the one’s digit of the two-digit total; [and]

i) the dealer resolving the wagers based on whether the designated player’s hand or the banker’s/dealer’s hand is nearest to a value of 0.

This looks rather complicated and inventive, right? Actually, no. Applying the Bilski precedent, the examiner, the PTAB, and the Federal Circuit each concluded that Claim 1 does nothing more than “attempt to claim a new set of rules for playing a card game.” Card games and their variants are rather well-known by those skilled in the relevant art. The PTAB specifically noted that “shuffling and dealing cards [is] conventional in the gambling art” and that Claim 1’s new method of assigning point values to particular cards is not enough to render this as patent eligible.

On appeal, the Federal Circuit categorized this Blackjack Variant as a “wagering game” that is comparable to “fundamental economic practices” that have previously been found abstract by the Supreme Court. Prior to this appeal the PTAB already held that “a wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the cards.” This is a fancy way of stating that the game is primarily an application of math and statistics. The Federal Circuit took it a step further and compared it to the facts of the Alice case, which concerned a method of exchanging financial obligations. This was also found to be an abstract idea.[10] This card game is also comparable to Bilski, which addressed the patentability of a method for assessing a hedging risk, which was also deemed to be an abstract idea.[11]

Of course, the two-step test allows a second bite at the proverbial apple. The card game inventors simply needed to demonstrate that this particular patent application discloses an “inventive concept” that transforms any alleged abstract ideas into something more. The Blackjack Variation application, however, merely recites the standard steps of shuffling and dealing a conventional deck of 52 cards and assigning point values to each card. Then determining a winning hand based on these point values. This is essentially the embodiment of a non-patentable abstract idea. Even though there is a claim in the application to apply these steps to a “virtual” deck of cards and make it a fully electronic game, the Bilski case had long since denied patent rights to inventions that are mere computerized versions of a known concept.

 

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Overcoming “Abstract” Limitations to Patent a Card Game?

The interesting part of the Federal Circuit’s analysis is not the Court’s final decision on the Blackjack Variant. Instead, the Court theorized what might be patentable in the realm of card games and gambling arts. Specifically, the Court set forth a hypothetical where “claims directed to conducting a game using a new or original deck of cards” could overcome the Mayo, Bilski, and Alice hurdle for abstract ideas. Attorneys representing the USPTO even conceded this possibility during oral arguments.

What does this mean? If you create a new deck of cards that is fundamentally distinguished from the “standard” 52 card deck with four different suits of 13 cards each, and then create a new game using this novel collection of cards, you might have stumbled across something that “transforms” a known concept into something inventive that would be theoretically be protected by 35 U.S.C. § 101. You would be an inventor!

Say, have you ever played 65 card pick-up? It is this new game I created…

[1] U.S. Pat. App. No. 2012/0098197 (Oct. 26, 2010).

[2] See In re Smith, __ F.3d __, No. 2015-1664 (Fed. Cir. March 10, 2016).

[3] U.S. Const. art. I, § 8.

[4] Of course, the correct formula is that E=γmc2 – where γ is a relativistic multiple that is usually close to “1”

[5] Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (U.S. 2012).

[6] 561 U.S. 593 (2010)

[7] 134 S. Ct. 2347 (U.S. 2014).

[8] Mayo, 132 S. Ct. at 1296-97; Alice, 134 S. Ct. at 2355.

[9] Alice, 134 S. Ct. at 2357.

[10] 134 S. Ct. at 2356-57.

[11] 561 U.S. at 611.

 

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March 22nd, 2017 at 8:33:40 AMpermalink

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As I am sure most of you know since 2014 it has been near impossible for game inventors to obtain utility patents for their new game ideas.

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Cases such as Bilsky, Alice and more on point In Re Smith set devastating precedence which essentially established that casino table games are abstract ideas and thus not eligible for utility patents.

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However, if you read the Court's ruling in In Re Smith you will find that there was specific limiting language included in the Order that made it clear that they did not intend on the decision to act as a blanket that nullifies all casino games from being eligible. So the question is, what elements would an eligible idea have that In RE Smith lacked? Well the Court in Smith did hint at a few examples.

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“That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envision, for example, claims directed to conducting a game with a new or original deck of cards may be eligible."

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There is also language referenced in both the Mayo case and Alice case that seems positive where the court stated "Abstract ideas, including a set of rules for a game, may be patent eligible if they contain an “‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.”

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Now just in the past few months a few additional cases have stoked the fire even more. The two that are most notable are McRO, INc V. Bandai Namco Games America Inc and Enfish, LLC v. Microsoft.

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In my opinion, McRO is the one that is most compelling. In that case, the Court reversed the District Court's ruling that the idea was ineligible as it constituted an abstract idea.

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The Court held that a method for automatically animating lip synchronization and facial exp螃蟹ress和谐ions of animated characters was patent-eligible because, "the claims are focused on a specific asserted improvement in computer animation (the automatic use of rules of a particular type ); it is the incorporation of the claimed rules, not the use of the computer, that improves the process."

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These cases are definitely a good sign as the Courts deal with the madness that has been created in interpreting section 101.

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Those of you willing to take a stab at it will first and foremost have to have a set of facts that is distinguishable from In Re Smith. That is bad news for variants and side bets.

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However, if you have a game that consists of a new and novel original set of rules you might just have a chance.

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I'm sure there is more to come on this subject and I will give an update when it does.

https://www.patent213.com/2016/03/federal-circuit-denies-patent-on-gaming-method/

Federal Circuit Denies Patent on Gaming Method

 

By T. Gregory Peterson, Ph.D. on March 29, 2016

POSTED IN 35 USC 101

Federal Circuit Denies Patent on Gaming Method Do not pass go. Do not collect $200. This is the message often heard when claims are held to cover patent ineligible laws of nature, natural phenomena or abstract ideas. Once the claim is placed in the patent-ineligible box, additional claim elements must provide an inventive concept sufficient to transform the claims into patent-eligible subject matter. In re Smith (Federal Circuit, March 10, 2016) discusses this analysis.

 

Patent Application No. 12/912,410 (entitled “Blackjack Variation”) claims a method of conducting a wagering game utilizing real or virtual standard playing cards. As the title suggests, the method in many respects mirrors the rules of traditional Blackjack. However, the claimed method differs from traditional Blackjack as the variation replaces the “blackjack” with a “natural zero” (defined as the first two cards of the hand being a pair of 5’s, 10’s, jacks, queens or kings) and employs a different scoring system. The method also includes traditional and well-known elements, such as using standard playing cards, placing a wager, shuffling and dealing cards, and using a dealer.

 

Under 35 U.S.C. § 101, patent-eligible subject matter is defined as any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, with the caveat that laws of nature, natural phenomena, and abstract ideas are not patent eligible. The purpose of the exceptions is to prevent patents from preventing access to “the basic tools of scientific and technological work.” The examiner rejected the claims as directed to patent-ineligible subject matter under 35 USC § 101, taking the position that the claims were directed to an abstract idea as the claims attempted “to claim a new set of rules for playing a card game.”

 

The Patent Trial and Appeal Board upheld the examiner’s rejection applying the two-step test set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. v. CLS Bank International, which requires:

 

determining whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea; and

examining the claim elements to determine if an inventive concept is present that is sufficient to “transform” the claimed patent-ineligible concept into a patent-eligible application.

Applying the first step, the board determined that the set of rules for conducting a wagering game was an abstract idea (in other words, the claims covered mental steps that could be carried out by a human using pen and paper). Applying the second step, the board concluded that the additional elements (shuffling cards, dealing cards, placing bets and the like) were conventional and well-known and therefore not sufficient to transform the claimed abstract idea into a patent- eligible concept.

 

The Federal Circuit affirmed with little discussion. The court reasoned that the rules for conducting a wagering game as claimed were similar to concepts declared patent ineligible as abstract ideas in prior cases (Alice Corp., considering a method of exchanging financial obligations; Bilski, considering a method of hedging risk; Ultramercial Inc. v. Hulu, LLC, considering methods for distributing copyrighted products;  IP Techs., Inc. v. Amazon.com, Inc., considering an offer-based price optimization abstract; and Planet Bingo, LLC v. VKGS LLC, considering methods of managing a game of bingo) and that the additional elements of the claims were purely convention and failed to transform the claims patent-eligible subject matter.

 

The opinion made it clear that the decision should not be interpreted to mean that all gaming invention are patent ineligible under § 101. While giving little detail on what would be required to transform an abstract claim for conducting a game into patent-eligible subject matter, the discussion would seem to require a novel/non-obvious physical article (for example, a new deck of playing cards or game pieces) or some type of additional feature to save the claim.

 

We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.

 

The examiner allowed claims 20 and 21, which were directed to a “Method for conducting a wagering game on a video gaming system comprising a processor, a video display and a player input controls…” where the process processor took the place of the physical dealer. No particular parameters regarding the processor or other components were claimed.  In the reasons for allowance, the examiner stated the recitation of the video gaming system “clearly recites a machine” and “clearly avoids a 101 non-statutory rejection.”  One wonders whether the video gaming system limitations really adds anything of “substance to the underlying abstract idea.”  In Alice the Court made it clear that “merely requir[ing] generic computer implementation” is not sufficient to move an otherwise ineligible claim into 101 eligible territory.  The same logic was also applied in Ultramercial.

 

Two recent gaming patents seem to be consistent with the requirement for a new/non-obvious physical article. In U.S. Patent 9,220,973 (issued December 29, 2015), the claims were directed to an educational board game and included a novel “path advance device” for determining the number of spaces a player can move during a turn. Likewise, U.S. Patent  No. 9,286,747 (issued March 15, 2016) claimed a method for implementing a virtual card game and included requirements that the user perform physical acts (such as shooting a game gun at the display) to add cards to his/her hand in order to advance play.

 

Unfortunately, In re Smith does not provide an extensive discussion of what types of activities qualify as “inventive concepts” sufficient to transform the claims into patent-eligible subject matter. However, the opinion is consistent with prior cases and reinforces that when claiming abstract ideas (whether methods for game play, methods for organizing human activity or fundamental economic practices), the claims will be required to include some novel “post-solution activity” or “inventive concept” in order to be held patent eligible.

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T. Gregory Peterson, Ph.D.

Dr. Greg Peterson represents and advises clients on a wide variety of intellectual property issues. Dr. Peterson specializes in domestic and international biotechnology, chemical, pharmaceutical and medical device patent prosecution. Dr. Peterson has filed and prosecuted over 100 patent applications in diverse technological areas. View articles by Greg

 

B.S. Microbiology

Ph.D. Biochemistry and Molecular Genetics

 

Patent Registration Number: 45,587

https://patentlyo.com/patent/2016/03/federal-circuit-patents.html

Federal Circuit: No New Card Game Patents Unless you Also Invent a New Deck

March 10, 2016Abstract Idea, Subject Matter EligibilityDennis Crouch

In re Smith (Fed. Cir. 2016)

 

Ray and Amanda Smith’s patent applications claims a new method of playing Blackjack. The new approach offers ability to bet on the occurrence of “natural 0” hands as well as other potential side bets.  Claim 1 in particular requires a deck of ‘physical playing cards” that are shuffled and then dealt according to a defined pattern.  Bets are then taken with the potential of more dealing and eventually all wagers are resolved.

 

In reviewing the application, the Examiner Layno (Games art unit 3711) rejected these card games patents as ineligible under Section 101 – noting that the claim is “an attempt to claim a new set of rules for playing a card game [and thus] qualifies as an abstract idea.” The Patent Trial & Appeal Board affirmed that ruling – holding that “independent claim 1 is directed to a set of rules for conducting a wagering game which . . . constitutes a patent-ineligible abstract idea.”  The particular physical steps such as shuffling and dealing are conventional elements of card-gambling and therefore (according to the Board) insufficient to transform the claimed abstract idea into a patent eligible invention.[1]

 

On appeal, the Federal Circuit has affirmed – agreeing that the method of playing cards is an unpatentable abstract idea. The court held that a wagering game is roughly identical to fundamental economic practices that the Supreme Court held to be abstract ideas in Alice and Bilski. “Here, Applicants’ claimed ‘method of conducting a wagering game’ is drawn to an abstract idea much like Alice’s method of exchanging financial obligations and Bilski’s method of hedging risk.”[2]  Following the Board’s lead, the appellate court then found that the “purely conventional steps” associated with the physical act of playing cards do not “supply a sufficiently inventive concept.”  “Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities.

 

In dicta, the court wrote that some card games will still be patent eligible – perhaps those claiming “a new or original deck of cards”

 

The applicant also asked the Federal Circuit to review the USPTO’s Interim Guidance on Patent Subject Matter Eligibility.  The court, however, refused to pass any judgment on those guidelines because they were not directly binding rules upon either the examiner or the Board.  The court’s conclusion makes sense here, but glosses over the fact that an examiner’s performance is judged according to whether that examiner follows the eligibility guidelines. This transforms the guidelines into de facto rules. Update: As “6” commented below and I have now confirmed, examiners are not required to follow the “eligibility guidelines” and are not formally reviewed using those guidelines as a measuring stick.

 

= = = = =

 

[1] The examiner did allow Smiths’ claim 21, that was directed to the same method with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor (rather than real cards and a dealer) to accomplish the methodological approach.

 

[2] See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (finding offer-based price optimization abstract), cert. denied, 136 S. Ct. 701 (2015); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014) (determining that methods of managing a game of bingo were abstract ideas).

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.       View all posts by Dennis Crouch →