Beteiro, LLC v. DraftKings Inc.

104 F.4th 1350

BETEIRO, LLC, Plaintiff-Appellant v. DRAFTKINGS INC., PointsBet USA, Inc., BetMGM, LLC,Hillside New Jersey LLC, BetFair Interactive US LLC,TSG Interactive US Services Ltd. Corp., ODS Technologies LP,Kindred Group plc, Trannel International,Ltd., Unibet International, Ltd., Unibet Interactive, Inc., Defendants-Appellees

2022-2275

2022-2277

2022-2278

2022-2279

2022-2281

2022-2283

United States Court of Appeals, Federal Circuit

Decided: June 21, 2024

Appeals from the United States District Court for the District of New Jersey in Nos. 1:21-cv-20148-CPO-SAK, 1:21-cv-20155-CPO-SAK, 1:21-cv-20156-CPO-SAK, 1:21-cv-20158-CPO-SAK, 1:22-cv-00577-CPO-SAK, 1:22-cv-01536-CPO-SAK, Judge Christine P. O'Hearn.

Michael Scott Fuller, Garteiser Honea. PLLC, Tyler, TX, argued for plaintiff-appellant. Also represented by Randall T. Garteiser, Christopher A. Honea.

Eliot Damon Williams, Baker Botts LLP, Washington, DC, argued for defendant-appellee DraftKings Inc. Also represented by Jamie Roy Lynn; George Hopkins Guy, III, Palo Alto, CA; Robert Lawrence Maier, New York, NY; Clarke Stavinoha, Dallas, TX.

Elisabeth S. Theodore, Arnold & Porter Kaye Scholer LLP, Washington, DC, argued for defendants-appellees BetMGM, LLC, BetFair Interactive US LLC, Hillside New Jersey LLC, Kindred Group PLC, ODS Technologies LP, PointsBet USA, Inc, Trannel International, Ltd., TSG Interactive US Services Ltd. Corp., Unibet Interactive, Inc., Unibet International, Ltd. Defendant-appellee BetMGM, LLC also represented by Patrick Brodie Hall, Evan M. Rothstein, Denver, CO.

Megan J. Redmond, Erise IP, P.A., Overland Park, KS, for defendants-appellees BetFair Interactive US LLC, ODS Technologies LP, TSG Interactive US Services Ltd. Corp. Also represented by Caroline A. Bader, Eric Allan Buresh.

Arthur Zorio, Brownstein Hyatt Farber Schreck LLP, Reno, NV, for defendant-appellee Hillside New Jersey LLC.

Mark Michael Supko, Crowell & Moring, LLP, Washington, DC, for defendants-appellees Kindred Group plc, Trannel International, Ltd., Unibet International, Ltd., Unibet Interactive, Inc.

Charles Kramer Verhoeven, Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA, for defendant-appellee PointsBet USA, Inc. Also represented by Jared Weston Newton, Washington, DC.

Before Dyk, Prost, and Stark, Circuit Judges.

Stark, Circuit Judge.

Beteiro, LLC ("Beteiro") appeals from a judgment entered by the United States District Court for the District of New Jersey dismissing its multiple related patent infringement cases for failure to state a claim based on the subject matter ineligibility of the patent claims. We affirm.

I

Beteiro owns U.S. Patent Nos. 9,965,920 ("the '920 patent"), 10,043,341 ("the '341 patent"), 10,147,266 ("the '266 patent"), and 10,255,755 ("the '755 patent") (collectively, the "Asserted Patents"). All of the Asserted Patents share a common specification and title: "Apparatus and Method for Facilitating Gaming Activity and/or Gambling Activity." The Asserted Patents disclose a purported invention which "facilitate[s] gaming activity and/or gambling activity at a gaming venue remote from the user's or individual's physical location" such that the user can "participate in live gaming activity and/or gambling activity via a user communication device" even if the user is not in the same location as the gaming venue. '920 patent at 3:9-14.¹

The '920 patent explains that "many individuals enjoy gambling" but "may not always have access to particular gaming venues or gaming activities," for reasons including that the individuals may be located in a jurisdiction in which gambling is not lawful. Id. at 1:44-47. As a solution, the patent describes a preferred embodiment in which "a user can access a . . . gaming facility computer 30 via the user communication device 20 and place a bet, wager, and/or otherwise engage in gaming activity and/or gambling activity." Id. at 79:41-45. The "gaming facility computer 30 can determine if the remote gaming activity and/or gambling activity is allowed by the state having jurisdiction" over the individual by determining the location of that individual. Id. at 80:38-39. The patent describes ascertaining the user's location through the use of a global positioning system ("GPS") included in "user communication device(s)." Id. at 8:38-41. One embodiment describes the GPS equipped on a mobile device such as a mobile phone:

In another preferred embodiment, wherein the user communication device 20 is a wireless communication device and/or a mobile communication device (i.e. personal digital assistant, wireless videophone, wireless telephone, or palm-held device, etc., which can be equipped with a global positioning system (GPS) device 20J), the location of the user communication device 20 and, therefore, the location from which the gaming activity and/or gambling activity originates and/or from which it takes place can be determined by the user communication device 20 automatically transmitting position data and/or information to the respective central processing computer 10 and/or gaming facility computer 30 at the time of the user's accessing of the respective central processing computer 10 and/or gaming facility computer 30.

Id. at 80:10-24. Notably, the above-quoted portion of the specification is the only description anywhere in the very lengthy specification of a GPS equipped on a mobile phone.

Independent claim 2 of the '755 patent, which the district court, the parties, and we agree is representative for purposes of evaluating the issue of patentable subject matter, see J.A. 9-10, recites:

A computer-implemented method, comprising:

detecting, with or using a computer which is specially programmed for processing information for providing for a placement of a bet on or regarding a gaming activity, a gambling activity, or a sporting event, a posting of information regarding the gaming activity, the gambling activity, or the sporting event;

generating, with or using the computer, a notification message regarding the gaming activity, the gambling activity, or the sporting event;

initiating, with or using the computer, a communication link with a first communication device and transmitting the notification message to the first communication device as an electronic transmission, or transmitting, from the computer, the notification message as an electronic mail message, wherein the electronic mail message is received by or received at a first communication device, wherein the first communication device is associated with an individual;

receiving, with the computer, a bet message transmitted from the first communication device or from a second communication device, wherein the second communication device is associated with the individual, and further wherein the first communication device or the second communication device comprises a global positioning device, wherein the global positioning device determines a position or location of the first communication device or the second communication device, and further wherein the bet message contains information regarding a bet to be placed on or regarding the gaming activity, the gambling activity, or the sporting event, and information regarding the position or location of the first communication device or the second communication device; and

determining, with or using the computer, whether the bet is allowed or disallowed using the information regarding the position or location of the first communication device or the second communication device and, if the bet is allowed, processing information for placing the bet for or on behalf of the individual, or, if the bet is disallowed, processing information for disallowing the bet.

'755 patent at 95:1-42 (emphasis added).

During prosecution of three of the Asserted Patents, the patent examiner expressly evaluated the eligibility of the claims under 35 U.S.C. § 101 and found them eligible based on their requirement of a particular machine or processor. See J.A. 617-19.

In 2021 and 2022, Beteiro filed at least six cases in the District of New Jersey maintaining essentially identical patent infringement claims against DraftKings, Inc.; PointsBet USA, Inc.; BetMGM, LLC; Hillside New Jersey LLC; BetFair Interactive US LLC; and Kindred Group plc (hereinafter "Appellees"). Beteiro alleged that Appellees infringe certain claims of the Asserted Patents by "provid[ing] a plurality of gambling and event wagering services." J.A. 4. Appellees each filed Rule 12(b)(6) motions to dismiss on the grounds that the asserted patents claim nonpatentable subject matter under 35 U.S.C. § 101. In a concise, careful opinion, the district court granted all of the motions. J.A. 1-20. The court then denied Beteiro's motions for reconsideration, and Beteiro timely appealed.²

II

We review issues not unique to patent law, including a Rule 12(b)(6) dismissal, under the law of the regional circuit, in this case the Third Circuit. See Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1346 (Fed. Cir. 2018). The Third Circuit reviews Rule 12(b)(6) dismissals for failure to state a claim de novo. See Endo Pharms. Inc. v. Teva Pharms. USA, Inc, 919 F.3d 1347, 1352 (Fed. Cir. 2019) (citing Ballentine v. United States, 486 F.3d 806, 808 (3d Cir. 2007)).

Patent eligibility, governed by 35 U.S.C. § 101, is evaluated according to Federal Circuit law, and presents "a question of law, based on underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). We evaluate claims challenged under Section 101 by applying the now-familiar two-step Alice/Mayo framework. See Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216-24, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-80, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012). At step one, we consider "whether the claims at issue are directed to [a] patent-ineligible concept" such as an abstract idea. Alice, 573 U.S. at 217, 134 S.Ct. 2347. If they are, then we proceed to...