The Software IP Report

Claims to a New Method of Playing Blackjack Not Patent-Eligible, Says Federal Circuit

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

The Federal Circuit has affirmed the USPTO’s rejection of an applicant’s claims that it concluded “cover only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards.”  In re Smith, No. 2015-1664 (Fed. Cir. March 10, 2016) (opinion by Judge Stoll, joined by Judges Hughes and Moore). Citing several of its recent cases, including Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014), the Court pretty clearly says that rules of a game are per se an abstract idea, albeit while leaving the door open for an “inventive concept” e.g., a new deck of cards, that would render claims to the abstract idea patent-eligible.

The PatentlyO blog has a write-up of the substance of the decision; in this post I want to focus on two takeaways.

First, while the court took pains to state that “not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101,” it does appear that the Federal Circuit has done what the Supreme Court declined to do in Alice Corp. v. CLS Bank Int’l., and declared that an entire class of inventions is patent-ineligible.  In Alice, the Supreme Court explicitly refused to state that business methods are per se patent-ineligible.  But here, the Federal Circuit seems to be saying that any claims drawn to no more than “a set of rules for a game” are  per se patent-ineligible.  This statement implicates the broader question of whether any patent claim involving solely steps carried out by human beings can be patent-eligible.  I suspect most practitioners regard this question as settled (against potential applicants and claims), at least implicitly, by this and other decisions.

Second, this decision highlights how, for all but the easy cases (such as this one), the clearest statement of the law of patent-eligibility that is available does not have the force of law at all.  We all live with the problem that, when it comes to patent-eligibility analyses, patent examiners and applicants are left with little law that can be clearly applied to pending claims.  Consequently, applicants and examiners alike are often left clutching at the USPTO’s “Interim Guidance on Patent Subject Matter Eligibility.”  Here, the applicant had argued that the USPTO improperly relied on its Interim Guidance and that the Interim Guidance “exceeds the scope of § 101 and the Supreme Court’s Alice decision.”  In response, the Court took pains to explain that the Interim Guidance is simply that, guidance, and does not bind the Court.  As the Interim Guidance states, it does not “create any right or benefit, substantive or procedural, enforceable by any party against the Office.”

Moreover, as Prof. Crouch notes in his post linked-to above, the USPTO has no formal requirement that examiners follow its patent-eligibility Guidance.  Nonetheless, we all know they often do.  Furthermore, applicants frequently reach into examples in the Guidance to convince (or try to convince) the Office to withdraw a Section 101 rejection.  Even at least one district court has relied in the Interim Guidance to make its patent-eligibility determination.  Nonetheless, the document (or, really set of documents), on which both practitioners and applicants heavily rely, receives no consideration from the highest patent court in the land.  In other words, the most specific statement of the law of patent-eligibility available is not regarded as a statement of the law at all.  And look, I understand the concept that an agency’s internal memoranda do not have the force of law, and I don’t question what the Court has said here.  But this is quite a state of affairs.