PATENT CASE OF THE WEEK 

In Re: Marco Guldenaar Holding B.V., Appeal No. 2017-2465 (Fed. Cir. Dec. 28, 2018)

The Federal Circuit affirmed the final written decision of the Patent Trial and Appeal Board (“PTAB”) finding claims directed to a dice game ineligible for patenting under 35 U.S.C. § 101.  The case is more remarkable for the concurring decision, discussed below, than the holding.

The patent application related 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.”  The novelty of the claimed invention asserted was the markings on the dice, which had only particular faces marked. The Board affirmed the patent examiner’s rejection of certain claims as being directed to patent-ineligible subject matter under § 101 as well as obvious under the printed matter doctrine. 

The Court recited the two-step framework to determine whether claimed subject matter is patent-eligible set in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).  The Court held that Marco’s claimed “method of playing a dice game” was directed to a method of conducting a wagering game, with the probabilities based on dice rather than on cards and, therefore, directed to an abstract idea.

On appeal, Marco argued 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. The Court held that the markings on the dice constituted printed matter, which falls outside the scope of § 101. Marco also argued that the claimed method of playing a dice game is not an abstract idea because it recites a physical game with physical steps. The Court rejected this argument, holding that “the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.” 

The Court also held that the Board properly treated independent claim 1 as representative of Marco’s rejected claims. The Court reviewed Rule 41.37(c)(1)(iv), which sets out that “when an applicant does not provide separate arguments for different patent claims, the Board may select a single claim from a group and decide the appeal on the basis of the selected claim alone.”  The Court found that Marco’s brief did not provide the necessary substantive arguments as to why the additional limitations in the dependent claims rendered the claims patent eligible. 

Having affirmed the Board’s rejection of the appealed claims under § 101, the Court did not review the § 103 rejection of the claims.

Senior Judge Mayer issued a strong concurrence.  Judge Mayer disagreed with the panel that the patent eligibility inquiry can have any “underlying issues of fact.”  Judge Mayer, citing an opinion by Judge Reyna, suggested that all § 101 inquiries should be treated as pure questions of law, and opined that “[b]ecause patent eligibility is a pure question of law, section 101 can, and should, be used to strike down patents at the earliest stages of litigation, or even before, as in this case from the PTO. Patent disputes are notoriously time-consuming and costly. . . Resolving subject matter eligibility challenges early conserves scarce judicial resources, provides a bulwark against vexatious infringement suits, and protects the public by expeditiously removing the barriers to innovation created by vague and overbroad patents.”

This opinion stands in stark contrast to recent Federal Circuit opinions covered in Fresh From the Bench in which cases were remanded to the district court for determinations of fact.  See our write-up of Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) here. 

Judge Mayer also opined that “claims directed to dice, card, and board games can never meet the section 101 threshold.”  He concluded, “Alice, for all intents and purposes, articulated a ‘technological arts’ test for patent eligibility. . . While games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge. They should therefore be deemed categorically ineligible for patent.” 

The Court is beginning to develop a split on these issues, which practitioners will be interested in following.

The opinion can be found here.