Rex Hwang
Jeffer Mangels Butler & Mitchell LLP
Shenel Ozisik
Jeffer Mangels Butler & Mitchell LLP
Are games patentable? Technically, yes. For example, iconic games such as Battleship, Monopoly, and Twister were all patented. Numerous casino games have been patented as well. Indeed, decisions involving gaming patents have helped shape substantive patent law.1 Nonetheless, gaming patents have seen better days, and recent decisions raise serious questions about the continued viability of gaming patents moving forward. One such recent case, which we will focus on for this quarter's article, is In re Marco Guldenaar Holding B.V. ("Marco").2
In Marco, the Federal Circuit affirmed the Patent Trial and Appeal Board's ("Board") determination that method claims for a dice game in a pending patent application were properly rejected by the examiner as being directed to patent-ineligible subject matter under 35 U.S.C. § 101. This case continued the Federal Circuit's trend of rejecting gaming patents under § 101. Marco also included a concurring opinion from Judge Mayer where he provocatively proclaimed that games "contribute nothing to the existing body of technological and scientific knowledge...[and] should therefore be deemed categorically ineligible for patent."3 While the Federal Circuit has rejected any categorical bar to patentability for gaming patents, one is left to question whether, for all intents and purposes, that is the direction that we are headed for the vast majority of game-related patents.
Before turning to Marco, a brief summary of the law that came before might be helpful to some readers. Under § 101, "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may be eligible for patent protection." Courts, however, have developed three exclusions to this broad provision for laws of nature, natural phenomena, and abstract ideas, which are never patentable. These exclusions are grounded in the principle that the basic building blocks of human ingenuity belong in the public domain.
In 2014, a seminal patent eligibility case came before the United States Supreme Court. That case, Alice Corp. v. CLS Bank International,4 articulated the analytical framework that § 101 cases follow today. That framework asks two questions. First, are the claims at issue directed to a patent-ineligible concept-that is, natural phenomena, laws of nature, or abstract ideas? If the answer is yes, the second question comes into play: do the claims contain an "inventive concept" sufficient to transform the patent-ineligible concept into a patent-eligible application?5 If the answer is no, then the claims are not patent-eligible under § 101.
Following Alice, the Federal Circuit decided In re Smith ("Smith"),6 which is relevant to this article. Smith concerned an attempt to patent a new method of playing Blackjack. The application, entitled "Blackjack Variation," purported to relate to "a wagering game utilizing real or virtual standard playing cards."7 The Federal Circuit affirmed the Board's rejection of the claims under § 101 for being directed to patent-ineligible subject matter. In particular, applying step one of Alice, the court compared the applicants' claimed "method of conducting a wagering game" to the claimed method of exchanging financial obligations in Alice, which was held to be drawn to an abstract idea. The Federal Circuit reasoned that gambling is effectively a method of ex-
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changing financing obligations based on probabilities created by the distribution of the cards. Thus, in light of Alice, the claimed method of conducting a wagering game was determined to be drawn to an abstract idea.8
Applying step two of Alice, the court noted that the claims at issue required shuffling and dealing "physical playing cards," which the applicants argued made the claims patent-eligible.9 The Federal Circuit disagreed. "Just as the recitation of computer implementation fell short in Alice," the court wrote, "shuffling and dealing a standard deck of cards are purely conventional activities."10 Therefore, the court held that the claims did not have an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.
Notably, the court stated in dicta that other games could possibly pass muster under § 101. In particular, the court noted that it could see claims directed to conducting a game using a "new or original deck of cards" possibly surviving step two of Alice"11
Marco Guldenaar Holding B.V. ("Guldenaar") filed U.S. Patent Application No. 13/078,196 ('196 Application), which is entitled "Casino Game and a Set of Six-Face Cubic Colored Dice." The '196 Application...
