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Are Rules for Playing a Game Patentable?

Posted in Intellectual Property Litigation, IP, Patent Law

A lot of things are patentable. Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable. But some things are not: the exceptions are laws of nature, natural phenomena, and abstract ideas.

The Federal Circuit Court of Appeals has many times had to decide what these terms mean. To make that determination; the court applies the two-part test set forth set forth by the Supreme Court in Alice Corp v. CLS Bank International, 573 U.S. 208 (2014). First, the court decides if the claims sought to be patented fall within patent-ineligible subject matter, such as abstract ideas. If so, then in a second step, the court decides if the claims contain some element that transforms the abstract idea into patent-eligible subject matter.

In 2016, the Federal Circuit applied the Alice test to decide whether a method of playing a wagering card game was patentable. In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In that case, the court held that the claimed method of playing the card game was similar to the method of mitigating financial settlement risks that was claimed in Alice and the method of hedging risks in consumer transactions that was claimed in Bilski v. Kappos, 561 U.S. 593 (2010).

In 2018, the Federal Circuit decided whether a method of playing a wagering dice game was patentable. In re Marco Guldenaar B.V., 911 F.3d 1157 (2018). In that case, the claims required providing a set of three dice, in which the first die had one face marked, the second die had two faces marked, and the third die had three faces marked; wagering on an outcome where one or more of the marked faces of the dice would appear; rolling the dice; and paying out money if the wager outcome occurred. The patent application had been rejected by the PTO on the grounds that the claims were directed to patent-ineligible subject matter. The PTO found that the claims, for the rules for playing a game, fell within “methods of organizing human activity” and constituted an abstract idea. The PTO also rejected the claims on the printed matter doctrine.

The Patent Trial and Appeal Board affirmed the PTO’s rejections.

The Federal Circuit affirmed the decision of the PTAB, holding that the claims were ineligible as directed to an abstract idea. The court said that the claims for a method of playing a wagering game were similar to the claims that were in rejected in Smith. The court agreed with the PTAB that the claims were the rules for playing a game, and were also a method of organizing human activity. The court explained that rules for playing a game are an abstract idea, but that, under the Alice test, they may be patent-eligible if the claims include an inventive concept that transforms the abstract idea into something more. However, the court found that the steps of placing a wager, rolling the dice, and making a payout on the wagered outcome were merely conventional steps, not an inventive concept. Thus, under Alice, the claims were a patent-ineligible abstract idea.

The court further held that the rejection of the claims on the printed matter doctrine was proper. The applicant had argued that the markings on the dice made the claims patentable. The court held that the markings were printed matter, which is not patentable, because the content of information is not patent-eligible subject matter under §101.

Lastly, the court clarified that the fact that the claims are directed to a physical game is not determinitive. Just because something is physical does not mean that it overcomes the abstract idea exception to patentability. Rules for playing a game may involve physical steps, but they still constitute an abstract idea.