In re Marco Guldenaar Holding B.V.

• Decision Date: 28 December 2018
• Docket Number: 2017-2465
• Citation: 911 F.3d 1157
• Parties: IN RE: MARCO GULDENAAR HOLDING B.V., Appellant
• Court: U.S. Court of Appeals — Federal Circuit

911 F.3d 1157

IN RE: MARCO GULDENAAR HOLDING B.V., Appellant

2017-2465

United States Court of Appeals, Federal Circuit.

Decided: December 28, 2018

Christian D. Ehret, The Webb Law Firm, Pittsburgh, PA, argued for appellant. Also represented by Nathan J. Prepelka.

Mary L. Kelly, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by Thomas W. Krause, Coke Morgan Stewart, Philip J. Warrick.

Before Chen, Mayer, and Bryson, Circuit Judges.

Concurring opinion filed by Circuit Judge Mayer.

Chen, Circuit Judge.

Marco Guldenaar Holding B.V. (Appellant) appeals the final decision of the Patent Trial and Appeal Board (Board) affirming the rejection of claims 1–3, 5, 7–14, 16–18, and 23–30 of U.S. Patent Application No. 13/078,196 (the '196 patent application) under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. Because the claims are directed to the abstract idea of rules for playing a dice game and the only arguable inventive concept relates to the dice markings, which constitute printed matter, we affirm.

BACKGROUND

Appellant filed the provisional application from which the '196 patent application claims priority on April 2, 2010. 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." Joint App. (J.A.) 140. Claim 1, which the Board treated as representative, recites:

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, wherein 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.

J.A. 76. According to Appellant, the primary novelty of the claimed invention is the markings (or lack thereof) on the dice, which have only particular faces marked.

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." J.A. 35, 85. The examiner also concluded 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. J.A. 88.

On appeal, the Board affirmed both rejections. Applying the two-step framework laid out in Alice Corp. v. CLS Bank International , 573 U.S. 208, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014), the Board determined that claim 1 was directed to the abstract idea identified by the examiner and that the steps in claim 1, considered individually and as an ordered combination, lacked an "inventive concept" sufficient to transform the claimed abstract idea into patent-eligible subject matter. J.A. 8–12.

Appellant appealed to this court, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(a).

STANDARD OF REVIEW

Patent eligibility under 35 U.S.C. § 101 is a question of law that may contain underlying issues of fact. Interval Licensing LLC v. AOL, Inc. , 896 F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc. , 881 F.3d 1360, 1365 (Fed. Cir. 2018) ). We review an ultimate conclusion on patent eligibility de novo . See id.

DISCUSSION

A. Section 101 Analysis

A patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Ass'n for Molecular Pathology v. Myriad Genetics, Inc. , 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013) (internal brackets omitted) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 70, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) ).

To determine whether claimed subject matter is patent-eligible, we apply the two-step framework introduced in Mayo , 566 U.S. at 77–78, 132 S.Ct. 1289, and further explained in Alice , 573 U.S. at 218, 134 S.Ct. 2347. First, we "determine whether the claims at issue are directed to a patent-ineligible concept" such as an abstract idea. Id. Second, we "examine 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." Id. at 221, 134 S.Ct. 2347 (quoting Mayo , 566 U.S. at 72, 80, 132 S.Ct. 1289 ).

In Interval Licensing , we explained the origins of the abstract idea exception and applied the exception to a computer software-based invention. Interval Licensing , 896 F.3d at 1342–46. We have also applied the abstract idea exception in other settings, for example to "fundamental economic practice[s] long prevalent in our system of commerce, including ‘longstanding commercial practice[s].’ " Intellectual Ventures I LLC v. Symantec Corp. , 838 F.3d 1307, 1313 (Fed. Cir. 2016) (quoting Bilski v. Kappos , 561 U.S. 593, 611, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) ) (omitting internal citations and quotation marks).

In re Smith , 815 F.3d 816 (Fed. Cir. 2016), is highly instructive in this case. In Smith , we concluded that the claimed "method of conducting a wagering game" using a deck of playing cards was drawn to an abstract idea. We likened the claimed method to the method of exchanging financial obligations at issue in Alice and the method of hedging risk at issue in Bilski . Id. at 819. We agreed with the Board's reasoning that "[a] wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the cards." Id. at 818–19. We also found that the method of conducting a wagering game was similar to the subject matter we previously held to be patent-ineligible in OIP Technologies, Inc. v. Amazon.com , 788 F.3d 1359, 1362 (Fed. Cir. 2015), and Planet Bingo, LLC v. VKGS LLC , 576 F. App'x 1005, 1007 (Fed. Cir. 2014). Smith , 815 F.3d at 819.

Here, Appellant's claimed "method of playing a dice game," including placing wagers on whether certain die faces will appear face up, is, as with the claimed invention in Smith , directed to a method of conducting a wagering game, with the probabilities based on dice rather than on cards. Given the strong similarities to the ineligible claims in Smith , Appellant's claims likewise are drawn to an abstract idea.

In its brief, Appellant contends that the Patent Office uses a certain label—methods of organizing human activities—as a "catch-all abstract idea" and expresses concern that the Board has used the phrase improperly as an "apparent shortcut." Appellant Op. Br. 16. We agree that this phrase can be confusing and potentially misused, since, after all, a defined set of steps for combining particular ingredients to create a drug formulation could be categorized as a method of organizing human activity. Here, however, 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. In sum, we agree with the Board that Appellant's claims are directed to the abstract idea of "rules for playing a dice game."

"Abstract ideas, including a set of rules for a game, may be patent-eligible if [the claims] contain an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application." Smith , 815 F.3d at 819 (quoting Alice , 573 U.S. at 221, 134 S.Ct. 2347 ) (omitting quotation marks). 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. Mayo , 566 U.S. at 81, 132 S.Ct. 1289. For example, a claim calling for a generic computer operating in conventional ways to perform an abstract idea lacks an inventive concept. Alice , 573 U.S. at 225, 134 S.Ct. 2347. The claims here recite the steps of placing a wager, rolling the dice, and paying a payout amount if at least one wagered outcome occurs—none of which Appellant on appeal disputes is conventional, either alone or in combination. J.A. 76. Just as the claimed steps of shuffling and dealing playing cards fell short in Smith , and recitation of computer implementation fell short in Alice , the claimed activities here are purely conventional and are insufficient to recite an inventive concept. See Alice , 573 U.S. at 223–24, 134 S.Ct. 2347 ; Smith , 815 F.3d at 819.

Appellant's argument on appeal has a different focus from what it argued below. It now contends that "the specifically-claimed di[c]e" that 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. Appellant Op. Br. 20. The markings on Appellant's dice, however, constitute printed matter, as pointed out by the Board, and this court has generally found printed matter to fall outside the scope of § 101. See AstraZeneca LP v. Apotex, Inc. , 633 F.3d 1042, 1064 (Fed. Cir. 2010...