One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer implementation.  But that is not always the case.  Under current interpretations of the eligibility standard, not only does the language of the actual claims matter, so does the context of the invention.

Gree was issued U.S. Patent No. 9,597,594, and it was timely challenged in a Post Grant Review (PGR) by Supercell.  The challenger is a mobile game development company, responsible for the widely-popular Clash of Clans and related apps.  The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) ultimately found the majority of the claims under review to be ineligible for patenting under 35 U.S.C. § 101.  Gree appealed.

Claim 1 of the '594 patent, which is representative, recites:

A method for controlling a computer that is provided with a storage unit configured to store game contents arranged within a game space, first positions of the game contents within the game space, and a template defining second positions of one or more of the game contents, and that progresses a game by arranging the game contents within the game space based on a command by a player, the method comprising:
    when the template is applied to a predetermined area within the game space based on the command by the player, moving, by the computer, the game contents arranged at the first positions within the game space to the second positions of the game contents defined by the template within the predetermined area.

The invention described as being applicable to how a user controls city-building games, "in which a player builds a city within a virtual space (hereinafter referred to as 'game space') provided in the game program in a computer."  These virtual cities include "arrangements of game contents, i.e., items such as protective walls, buildings,  . . . soldiers, weapons, etc."

The problem being solved is related to managing game contents in large cities.  According to the specification, "it is very complicated for a player to change positions, types, levels, etc., of individual items in the cities."  As a consequence, users who play the game for some time find it increasingly necessary to micromanage these resources.

The claimed invention overcomes these drawbacks by "creating a template defining positions of one or more game contents and subsequently applying the template to a predetermined area within the game space."  Doing so causes the computer to "move[] the game contents arranged within the game space to the positions of the game contents defined by the template."  Particularly, when "the numbers of game contents of each type defined by the template match the numbers of game contents of each type in the game space to which the template is to be applied[, this causes] all game contents arranged within the game space [to be] moved to positions of game contents as defined by the template."  Put another way, a single pre-defined operation can be used to replace a potentially large number of user interface interactions.

Other claimed embodiments include handling mismatches between "the numbers of game contents of each type defined by the template and the numbers of game contents of each type in the game space to which the template is to be applied."  When the number of game contents is larger, "those with the smallest moving distance (e.g., Manhattan distance) to positions defined by the template may be moved to the positions of game contents as defined by the template."  Conversely, when the number of game contents is smaller, "all game contents . . . may be moved to positions of game contents defined by the template, to which the moving distance is the smallest, with positions on which no game contents are arranged among the positions of game contents defined by the template."

In Alice Corp. v. CLS Bank Int'l, the Supreme Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101.  One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle.  While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Recently, the Federal Circuit provided a major clue as to how to think about patent eligibility in practice.  In Dropbox Inc. v. Synchronoss Techs. Inc. the Court wrote that "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art."  This suggests that in order for a claim that is otherwise directed to an abstract idea to be successful under § 101, it should have three qualities: specificity, a technical solution that it provides, and some degree of novelty.  More particularly, there should be a nexus between these three factors -- specificity, technical character, and novelty should appear in the same claim element or at least be explicitly linked in some fashion in the recitation of the claim.

The outcome of the PGR trial was that claims 1, 8, and 10-20 of the '594 patent were found to fail the eligibility test.  On review, the Federal Circuit agreed with the PTAB that, under part one of Alice, all claims are "directed to the abstract idea of creating and applying a template of positions of one or more game contents."  The Court further agreed with the PTAB that "certain claims of the '594 patent are broad enough to cover simply implementing the long-standing and conventional game of correspondence chess using chess templates on a computer."[1]

Gree attempted to argue that the claims involved an improved graphical user interface.  But the Court rapidly dismissed this effort because only one of the claims specifically recited such features and did so at a high level.

Finding the claims directed to an abstract idea, the Court turned to part two of Alice.  There, it found that almost all of the claims -- claim 1 included -- lacked an inventive concept.  In particular, the computer hardware limitations "merely invoke generic computer components performing their standard functions to limit the use of the abstract idea itself to the technological environment of a game space on a computer."  Further, the Court indicated that "claims 1, 8, and 10–20 are so broad that they encompass automation of . . . well-understood, routine, conventional activity."

In contrast, the Court found that claims 5-7, directed to the mismatched template scenarios, did include significantly more than the abstract idea itself.  These claims recite:

5.  The method according to claim 1, wherein when the number of game contents arranged within the game space is smaller than the number of game contents for which the second positions are defined by the template, the computer moves the game contents arranged at the first positions within the game space to the second positions of the game contents defined by the template to which the moving distance is the smallest.

6.  The method according to claim 5, wherein out of the second positions of the game contents defined by the template, the computer displays positions on which no game contents are arranged and the game contents, in a discernible condition.

7.  The method according to claim 1, wherein when the number of game contents arranged within the game space is larger than the number of game contents for which the second position[s] are defined by the template, the computer moves the game contents arranged at the first positions within the game space for which the moving distance to the second positions of the game contents defined by the template is the smallest, to the positions.

Unlike the other claims, claims 5-7 recite "specific steps for applying templates in mismatched template scenarios, these claims require something more than automating correspondence chess."  Further, "Supercell has not shown that conventional correspondence chess template application included any technique—let alone the specifically claimed technique—for applying a template in the claimed mismatched template scenarios."

In summary, the Court concluded that claims 1-4, and 8-20 were ineligible and that claims 5-7 were eligible.  Putting this into the Dropbox framework described above, the ineligible claims were non-specific and overlapped with known features from the prior art.  In contrast, the eligible claims were drawn toward specific features that were not known to be in the prior art.  The Court never explicitly addressed whether the claims had sufficient technical character, but seeing as it found some claims eligible, it appears that was the case.

But before finishing its opinion, the Court made an interesting criticism of PTAB's § 101 analysis that may be helpful for practitioners.  The Court observed that:

The Board also determined that under the Alice framework, Petitioner only needed to account for each claim limitation under either a formulation of the concept a claim is 'directed to' or under Alice step two.  To the extent that the Board meant that a proper § 101 analysis may consider some claim limitations only at Alice step one and others only at Alice step two, we do not agree with its reading of Supreme Court precedent.  Instead, both steps of the Alice inquiry require that the claims be considered in their entirety.

Thus, the propensity for the PTAB and USPTO Examiners -- and frankly other Federal Circuit panels -- to analyze claim elements under the auspices of either Alice part one only or part two only, is incorrect.

[1] As described in the opinion, in correspondence chess, "a first player fills out a post card with information that represents the current state of the board and makes an indication on the post card of the first player's intended move and mails the post card to a second player who, having already set up a chess board, moves a piece on the board in accordance with the instruction on the post card."  The template in correspondence chess would be the move as indicated on the post card.

Gree, Inc. v. Supercell Oy (Fed. Cir. 2020)
Panel: Circuit Judges Lourie, Hughes, and Stoll
Opinion by Circuit Judge Stoll