§ 101 35 USC 101 Alice v. CLS Bank CAFC claim rejections Courts Federal Circuit Federal Circuit Review Guest Contributors In re: Marco Guldenaar Holding B.V. IP News IPWatchdog Articles Judge Haldane Robert Mayer Judge Ray Chen Judge WIlliam Bryson Litigation patent Patent Trial and Appeal Board Patents Praxair Distribution v. Mallinckrodt Hospital Products printed matter doctrine PTAB Technology US Patent No. 4247114 USPTO

Federal Circuit Relies on Printed Matter Doctrine in Affirming Under § 101

Federal Circuit Relies on Printed Matter Doctrine in Affirming Under § 101

America Courtroom of Appeals for the Federal Circuit just lately issued a ruling affirming the Patent Trial and Attraction Board’s (“Board”) rejection of claims in a pending software underneath 35 U.S.C. § 101 for claiming patent-ineligible material. See In re Marco Guldenaar Holding B.V., No. 2017-2465, 2018(Fed. Cir. Dec. 28, 2018) (Earlier than Chen, Mayer, and Bryson, Circuit Judges) (Opinion for the courtroom, Chen, Circuit Decide) (Concurring opinion, Mayer, Circuit Decide).

In 2010, Marco Guldenaar Holding B.V. (“Marco”) filed the provisional software from which U.S. Patent Software No. 13/078,196 claimed precedence. The ’196 patent software pertains 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.” Throughout prosecution of the ’196 software, the examiner rejected claims 1-Three, 5, 7-14, 16-18, and 23-30 as being directed to patent-ineligible material beneath § 101. The examiner concluded that the claims have been directed to the summary concept of “rules for playing a game,” which fell inside the realm of “methods of organizing human activities.” The examiner additional discovered that the claims have been unpatentable for obviousness in view of U.S. Patent No. four,247,114 (Carroll) over “matters old and well known to dice games,” making use of the printed matter doctrine.

The Board affirmed each rejections on attraction after making use of the two-step framework laid out in Alice Corp. v. CLS Financial institution Int’l, 573 U.S. 208 (2014). It decided that declare 1 was directed to the summary concept recognized by the examiner and that the steps in declare 1 lacked an “inventive concept” adequate to rework the claimed summary concept into patent-eligible material. Appellant appealed to the Federal Circuit.

The Courtroom started its evaluation with step considered one of Alice and in contrast the claims of the ’196 software to these in an identical case in which the Courtroom discovered claims have been directed to patent-ineligible material, In re Smith, 815 F.3d 816 (Fed. Cir. 2016).  In Smith, the Courtroom held the claimed “method of conducting a wagering game” utilizing a deck of enjoying playing cards was drawn to an summary concept. Right here, the Courtroom discovered that Marco’s claimed the “method of playing a dice game,” together with putting wagers on whether or not sure die faces will seem up, was additionally directed to a way of conducting a wagering recreation, “with the probabilities based on dice rather than on cards.” Thus, Marco’s claims have been additionally drawn to an summary concept.

Marco argued that the Patent Workplace improperly makes use of the label “methods of organizing human activities” as a “catch-all abstract idea” and that the Board improperly makes use of the phrase as an “apparent shortcut.” Though the Courtroom agreed that the phrase “can be confusing and potentially misused,” it said that “where the Patent Office further articulates a more refined characterization of the abstract idea (e.g., ‘rules for playing games’), there is no error in also observing that the claimed abstract idea is one type of method of organizing human activity.”

Under Alice step two, the Courtroom decided that there was no creative idea enough to rework the claimed summary concept right into a patent-eligible software. The claims at difficulty recite the steps of putting a wager, rolling the cube, and paying a payout quantity if a minimum of one wagered end result happens. Marco didn’t dispute that any of those have been typical; quite, Marco argued that “the specifically-claimed di[c]e,” which have markings on one, two, or three die faces, will not be typical and their recitation in the claims quantities to “significantly more” than the summary concept. The Courtroom, nevertheless, agreed with the Examiner that the markings on the cube represent printed matter, and the Courtroom has usually discovered printed matter to fall outdoors the scope of § 101:

“Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight because such information is not patent eligible subject matter under 35 U.S.C. § 101.” Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018). Every die’s marking or lack of marking communicates info to individuals indicating whether or not the participant has gained or misplaced a wager, just like the markings on a typical die or a deck of playing cards. Accordingly, the recited declare limitations are directed to info.

Marco additionally contended that its claimed technique of enjoying a cube recreation couldn’t be an summary concept as a result of it recites a bodily recreation with bodily steps. The Courtroom rejected this argument “because the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.” Because the solely arguably unconventional facet of the recited technique of enjoying a cube recreation was discovered to be printed matter, thus falling outdoors the scope of § 101, the rejected claims didn’t recite an “inventive concept” adequate to “transform” the claimed material right into a patent-eligible software of the summary concept.

Lastly, Marco argued that the Board improperly handled declare 1 as consultant of the rejected claims. The Courtroom rejected this argument, relying on 37 CFR 41.37(c)(1)(iv), which specifies that when an applicant doesn’t present separate arguments for various patent claims, the Board might choose a single declare from a gaggle and determine the attraction on the idea of the chosen declare alone. Marco’s temporary to the Board recognized just a few further limitations in a subset of dependent claims, with none rationalization as to why the extra limitations rendered the claims patent eligible. The Board subsequently fairly grouped all claims collectively and didn’t err in treating declare 1 as consultant of Appellant’s rejected claims.

Decide Mayer agreed that the claims at difficulty have been patent-ineligible however wrote a concurring opinion to make two factors. First, Decide Mayer disagreed with the bulk opinion that the patent eligibility inquiry “may contain underlying issues of fact.” Slightly, he contended that material eligibility underneath § 101 is a pure query of regulation and a problem that ought to be resolved “at the earliest stages of litigation, or even before, as in this case from the PTO.” In line with Decide Mayer, “[i]njecting factual inquiries into the section 101 calculus will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than ‘promote[d] the Progress of Science and useful Arts,’ U.S. Const. art. I, § 8, cl. 8.” Second, Decide Mayer argued that claims directed to cube, card, and board video games can by no means meet the § 101 threshold as a result of they endeavor to affect human conduct, slightly than impact technological change.

Take Away

A patent applicant can’t rely on printed matter, e.g., labels on playing cards/cube, as the one unconventional function claimed to determine that the claimed invention incorporates an “inventive concept” adequate to “transform” the claimed summary concept right into a patent-eligible software.


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Robert Schaffer

Robert Schaffer

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