In re Smith (Fed. Cir. 2016)
Ray and Amanda Smith’s patent applications claims a new method of playing Blackjack. The new approach offers ability to bet on the occurrence of “natural 0” hands as well as other potential side bets. Claim 1 in particular requires a deck of ‘physical playing cards” that are shuffled and then dealt according to a defined pattern. Bets are then taken with the potential of more dealing and eventually all wagers are resolved.
In reviewing the application, the Examiner Layno (Games art unit 3711) rejected these card games patents as ineligible under Section 101 – noting that the claim is “an attempt to claim a new set of rules for playing a card game [and thus] qualifies as an abstract idea.” The Patent Trial & Appeal Board affirmed that ruling – holding that “independent claim 1 is directed to a set of rules for conducting a wagering game which . . . constitutes a patent-ineligible abstract idea.” The particular physical steps such as shuffling and dealing are conventional elements of card-gambling and therefore (according to the Board) insufficient to transform the claimed abstract idea into a patent eligible invention.[1]
On appeal, the Federal Circuit has affirmed – agreeing that the method of playing cards is an unpatentable abstract idea. The court held that a wagering game is roughly identical to fundamental economic practices that the Supreme Court held to be abstract ideas in Alice and Bilski. “Here, Applicants’ claimed ‘method of conducting a wagering game’ is drawn to an abstract idea much like Alice’s method of exchanging financial obligations and Bilski’s method of hedging risk.”[2] Following the Board’s lead, the appellate court then found that the “purely conventional steps” associated with the physical act of playing cards do not “supply a sufficiently inventive concept.” “Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities.
In dicta, the court wrote that some card games will still be patent eligible – perhaps those claiming “a new or original deck of cards”
The applicant also asked the Federal Circuit to review the USPTO’s Interim Guidance on Patent Subject Matter Eligibility. The court, however, refused to pass any judgment on those guidelines because they were not directly binding rules upon either the examiner or the Board. The court’s conclusion makes sense here, but glosses over the fact that an examiner’s performance is judged according to whether that examiner follows the eligibility guidelines. This transforms the guidelines into de facto rules. Update: As “6” commented below and I have now confirmed, examiners are not required to follow the “eligibility guidelines” and are not formally reviewed using those guidelines as a measuring stick.
= = = = =
[1] The examiner did allow Smiths’ claim 21, that was directed to the same method with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor (rather than real cards and a dealer) to accomplish the methodological approach.
[2] See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (finding offer-based price optimization abstract), cert. denied, 136 S. Ct. 701 (2015); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014) (determining that methods of managing a game of bingo were abstract ideas).