Eligibility: Dice Game Patent Craps Out

by Dennis Crouch

In re Marco Guldenaar Holdings B.V. (Fed. Cir. 2018)

Guldenaar is is seeking to patent his method of playing a dice game using specially marked dice.  U.S. App. No.  13/078,196.  The PTAB denied his patent on eligibility grounds and the Federal Circuit has now affirmed — holding that the method of game play is an abstract idea and the special markings on the dice represent unpatentable printed matter.  The decision here falls in line with In re Smith, 815 F.3d 816 (Fed. Cir. 2016) where the court held that the claimed method of playing and wagering-on a card game was an abstract idea. The patented method in Smith used a standard deck of cards, and the Federal Circuit noted that “shuffling and dealing a standard deck of cards are “purely conventional” activities. Citing Alice.

Guldenaar’s claim 1 is directed to a “method of playing a dice game” that begins with the provision of a set of three dice — each die having either one, two, or three identical marks. (See the figures above).  Someone then bets on whether or not the marks will appear face-up on the next role, and, after the roll, the bet is settled.  Pretty simple game. (Claim text below).

In applying Alice Step 1, the court found that the claims here are directed to the “rules for playing a dice game,” which is an abstract idea.  In the process, the court warned the PTO that its generalized approach to labeling “methods of organizing human activities” as abstract ideas, but found that this particular method fit the bill.

Under Alice Step 2, claims directed to an abstract idea can be patentable if the claims also include an “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application.”  Here, one particular inventive concept appears to be the claimed set of dice that is arguably inventive, and at least not purely conventional.  On appeal, however, the Federal Circuit ruled that the die markings “constitute printed matter [that] fall outside the scope of § 101.”

In Smith, the claims were directed to a standard deck of cards and the court indicated that claims using an original deck of cards could survive Alice. “We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.”   The panel here appears to reject that notion — holding instead that the the original set of dice cannot be seen as transformative since the original aspects

Judge Chen authored the majority opinion that was joined by Judge Bryson.  Judge Mayer filed a concurring opinion channeling Justice Stevens concurring opinion in Bilski.  In Bilski, Justice Stevens (joined by Justices Ginsburg, Breyer, and Sotomayor) argued for a categorical exclusion of business method patents. Here, Judge Mayer argues for a categorical exclusion to the patenting of games — “claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

= = = =

Claim 1:

1. A method of playing a dice game comprising:

placing at least one wager on at least one of the following: that the first die marking on the first die will appear face up, that the second die marking on the second die will appear face up, that the third die marking on the third die will appear face up, or any combination thereof;

rolling the set of dice; and

paying a payout amount if the at least one wager occurs.

149 thoughts on “Eligibility: Dice Game Patent Craps Out

  1. 28

    ““claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.””

    Claims directed to wheel, engines, and flying machines can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

    Claims directed to chemicals, medicines, and drugs can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

    1. 28.1

      Yup. It is as I have said from the beginning. The judges selected by the large corporation had a telephone call. Will you agree to get those patents under control? Yes says the potential judge. Obama takes the contribution and nominates the judge. The judge is selected for prior irrational anti-patent ravings and known character problems. That is how about 6 of the judges of the CAFC were selected.

    2. 28.2

      Yours is probably the least intelligent reading of any court decision that I can recall in recent memory. Congrats!

      Judge Mayer’s conclusion is sensible, as his reasoning. There is a huge distinction to be drawn between promotion of progress in the useful arts (and the patent claims which eligibly protect those advances) and granting junk patents on “advances” (LOL) in “new rules” for … betting on dice tosses (W T F) or moving a piece around on a painted cardboard board (W T F F).

      I’m pretty sure Congress understands this, as do most ordinary people who (unlike Les) don’t fantasize about stroking a gigantic patent shaped phallus 24 hours a day.

      1. 28.2.1

        Yes Comrade, we know the peoples are better off when Parker Bros. can be ripped off and anyone with printing press and some glue can make and sell copies of capitalistic MONOPOLY game. It is these evil brothers that should go directly to jail, do not pass go and do not collect their ill gotten profits.

  2. 27

    Just another friendly reminder that the farce known as “patenting logic on a computer” rests in large part on a printed matter case that found a mobius strip to be eligible because the numbers printed on the strip could be used for “entertainment or education”.

    Super gratifying to watch this foundation crumble. And crumble it will.

  3. 26

    I’d rank this case as indicating that none of the judges on this panel are qualified to sit on the CAFC. They obviously do not understand their role in the process nor do they understand technology or innovation.

    If we are going to have a patent system, we need to dissolve the CAFC and reform it with qualified judges.

    1. 26.1

      I can see the sense of this argument, and I do not strongly disagree. As it happens, however, I do disagree. There is a reason that the CCPA (once it took on appellate jurisdiction over the PTO) quickly became much more capacious in its views of patent validity than the regional circuits. Similarly, there is a reason why the CAFC has historically fought with the SCotUS in a battle in which the CAFC tries to cabin and constrain the SCotUS’s patent-related decisions.

      People who spend every day thinking about patents quickly realize that the glib pronouncements of the SCotUS on these subjects are illogical and unworkable. The SCotUS has been intervening in the patent law so frequently of late that the long-standing CAFC equilibrium has been upset. I contend, however, that if you simply took away the SCotUS’s certiorari jurisdiction over the CAFC—even without making any other change to the CAFC—you would find the CAFC reverting to its previous equilibrium within about 5 to 10 years. This is just the natural consequence that results when people have to wade into the details of patent law on a daily basis, without interference from people who know less about patent law.

      1. 26.1.1

        This is the blame someone else argument. I don’t buy it. I think these people were chosen by a large corporation to burn the patent system down and then appointed by Obama (that is like 6 or 7 of them.)

        I also think that a few level headed people that understand patent law could counter the SCOTUS pretty easily. The CAFC has to go. That should be priority number one.

      2. 26.1.2

        Greg DeLassus: People who spend every day thinking about patents quickly realize that the glib pronouncements of conflicted patent-worshipping patent attorneys like me on these subjects are illogical and unworkable.

        Fixed for accuracy.

        The thing is, Greg: the Supreme Court has actually done a great job dealing with the CAFC’s ineptitude. Just because you like software patents and patents on correlations doesn’t make the Supreme Court’s statements which undermine your beliefs “glib.” It just makes your beliefs sound kinda like the beliefs of a whiny patent attorney who can’t get enough work.

      3. 26.1.3

        People who spend every day thinking about patents quickly realize that the glib pronouncements of the SCotUS on these subjects are illogical and unworkable.

        Careful there Greg – you are verging yet again on being “one-bucketed”

      4. 26.1.4

        “People who spend every day thinking about patents quickly realize that the glib pronouncements of the SCotUS on these subjects are illogical and unworkable.”

        How much of that generality would you attribute to the glib pronouncements typically being contrary to the financial interests of those who spend every day thinking about patents?

        1. 26.1.4.1

          Touché!

        2. 26.1.4.2

          How much of that generality would you attribute to the glib pronouncements typically being contrary to the financial interests of those who spend every day thinking about patents?

          Certainly some, but no one can look at Thomas’ “we need not labor to delimit the precise contours of the “abstract ideas” category” or handwaving “significantly more” and not consider those glib, regardless of your financial interests.

          1. 26.1.4.2.1

            More to the point, Abstract iDan, attempting to play some “blame game” of “well there are players on many sides that MAY do that” quite obfuscates the primary point that the party to which critical thinking is to be aimed at is the Supreme Court.

            It is after all the Supreme Court that has re-written the statutory law into the mess that we have now (as you point out, at least in some small part of at least one decision that threads the Gordian Knot mess that we have).

          2. 26.1.4.2.2

            iDan,
            For what it’s worth, the generality I was referring to was patent practicioners finding those supreme court decisions “illogical” and “unworkable”. “Glib” is a given.

  4. 25

    “While games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge. They should therefore be deemed categorically ineligible for patent.”

    I’d classify this opinion as worthy of bringing an impeachment action against the panel. Why do these foul judges think that they know something like that or that it is their place to make a finding of fact like that?

    1. 25.1

      MM, why do you bother to post “information”? What is the point?
      Why should someone pay you to perform mere information processing, which is what you are paid to do?
      How could a machine that replaces work that a person does be considered ineligible for patentability?
      The conservation of information is considered the most important law of physics. Search Susskind.
      Information processing takes time, energy, and space. Interaction with people is a technical problem.

      1. 25.1.1

        MM, why do you bother to post “information”? What is the point?

        Very serious stuff here! Truly deep, from the deepest thinkers.

        1. 25.1.1.1

          No answer MM. Because you can’t answer the question without exposing yourself to your inherent hypocrisy.

  5. 24

    Friendly reminder that the farce known as “patenting logic on a computer” rests in large part on a printed matter case that found a mobius strip to be eligible because the numbers printed on the strip could be used for “entertainment or education”.

    Super gratifying to watch this foundation crumble. And crumble it will.

    1. 24.1

      How goes your copyright project on “just logic”…?

      Super gratifying…? Your cognitive dissonance is showing. Again.

    2. 24.2

      Fyi, regarding protecting information and symbols printed on media of all kinds:

      link to theguardian.com

      Robert Frost’s haunting little poem, Stopping By Woods on a Snowy Evening, entered the public domain in the US on 1 January alongside thousands of works, by authors from Agatha Christie to Virginia Woolf, in an unprecedented expiration of copyrights. Unprecedented because it has been 21 years since the last major expiration in the US: the passing of the 1998 Sonny Bono Copyright Term Extension Act added a further 20 years to existing copyrights, meaning that the swathe of 1922 works which passed into the public domain in 1998, after a 75-year copyright term, are only now being followed by works first published in the US in 1923.
      “The drought is over,” proclaims Duke Law School’s Center for the Public Domain, highlighting some of the works which are now available royalty-free, by authors from Edgar Rice Burroughs to Kahlil Gibran, PG Wodehouse to DH Lawrence, Edith Wharton to ee c u mmings. It’s not only books: copyright in the US is also expiring on a host of films, paintings and music.

      1. 24.2.1

        Great.

        Are any of those on your “famed” “just logic” things?

    3. 24.3

      MM, why do you bother to post “information”? What is the point?

      Why should someone pay you to perform mere information processing, which is what you are paid to do?

      How could a machine that replaces work that a person does be considered ineligible for patentability?

      The conservation of information is considered the most important law of physics. Search Susskind.

      Information processing takes time, energy, and space. Interaction with people is a technical problem.

  6. 23

    I would bet that if someone had the time, they could find some patent opinions from hundreds of years ago that discuss how innovations include the person. I think that a lot of machines included innovations that involved enabling a person to better able participate in the manufacture.

    This is EXACTLY “human behavior.” The only difference is that now we are dealing with information that is changing how people behave rather than something like the angle of a knob. Again–what this is about is anti-patent judicial activists being appointed to the CAFC. This is about burning down patents.

    Any—ANY—intellectually honest person would see that information interacting with a human is an innovation. That changing the person’s behavior with the information is technical. What these judges are saying something like a light that flashes on the console of a car that indicates where an obstruction is and how to avoid it is not technical and not eligible for patentability. (But of course they would avoid applying their ineligible arguments in this case because it would be too unseemly.)

    The judges create these pot holes of logic to try and burn down the patent system. They are not intellectual honest and not intellectual consistent.

    1. 23.1

      Those who have actually studied innovation (and understand Kondratiev waves of innovation), must be appalled by the level of anti-innovation that has taken ahold of the US system for promoting innovation.

      1. 23.1.1

        It is incredible. The core of this is from the SCOTUS and Obama stacking the CAFC with people of poor character and anti-patent sentiment.

      2. 23.1.2

        The attempt here by Chen is to cut the relationship between the functional relationship between information and the human. Appalling.

        Chen also has one of the great strawmen in history in saying it is sure that some type of this went on in machines of old. Chen is what I said when he was a appointed. A very, very anti-patent judicial activist person that is not qualified to sit on the CAFC.

    2. 23.2

      Look at even Night Rider acknowledging that so many of these disputed patents come down to information interacting with a human, although of course, information can’t interact, as only actors can interact.

      Now merely one leap away from the obvious political and philosophical compromise to many of these eligibility issues. Abstract inventions are not the same thing as abstract claims.

      People using the information? Not eligible, always abstract. Non-humans using the information? Eligible, subject to 102/103 and 112, of course.

      1. 23.2.1

        You keep on trying to go back to a meaningless mantra.

        You would be much better off starting over from scratch on learning about innovation, the meaning of utility, and patent law.

    3. 23.3

      Dyk (“In my view,
      claims to business methods and other processes that
      merely organize human activity should not be patent
      eligible under any circumstances.”).”

      So a computer system that improves human productivity by watching what a person does and assigning tasks to optimize the work of the person is per se ineligible, ’cause, ’cause.

      I think if Trump gets re-elected that the big push should be to dissolve the CAFC and reform it with real patent attorneys.

  7. 22

    … all the below (and above) leaving one to wonder:

    Given it’s spec / disclosure, could a claim (ignoring in advance MM’s certain, “no way” response) be written which would be 101 eligible?

    1. 22.1

      Given it’s spec / disclosure, could a claim (ignoring in advance MM’s certain, “no way” response) be written which would be 101 eligible?

      Not sure why you would want to ignore the correct answer.

  8. 21

    I am not sure that I could convey to one of the ignora nt little judges that decide these cases the following emotions. You are working with a company and the inventor gets very excited realizing that they have figured something out and that it will improve their device.

    Now we are going to the situation where it does not matter. So, you improved the device? Who cares. As soon as it comes out or sooner it will be copied.

    Of course our little tiny weeny itsy bitsy intellects on the CAFC know nothing of this.

    1. 21.1

      In my experience, the honorable judges serving on the Federal Circuit are both very intelligent and very polite.

      It boggles my mind that any attorney would attack even a single judge in this manner, much less seemingly broadly attack the Court itself.

      You may disagree with a rationale in a particular decision, but if you think that the judges on the Federal Circuit are not intelligent, then I would posit, with no ill will intended, that you need to revisit your thinking.

      1. 21.1.1

        Sorry Jeremy, but I cannot agree with you and your desire for politeness.

        When decisions such as this are presented, the Judges fully open themselves up to the degree of condemnation that you are seeing.

        Yes, decorum IN a court of law is a different story, and I would certainly expect the choice of words, and perhaps even the tone to be a bit more restrained.

        But make no mistake – the views expressed in this opinion are fully condemnable. They are being – and they should be – condemned.

        Additionally, as I have posted, the fact that a sitting Judge pens the views expressed raise serious questions as to whether that Judge should remain on the bench. At a very minimum, this gives due and sufficient cause for parties that draw this Judge to ask for his recusal. Under any fully objective – but critical – analysis, he has gone far beyond the law in his expressed views and there will be no justice from him nigh no matter the case (if it be a software innovation case).

        The cry for “remove from the bench” gets a LOT of play here, and I am not one that typically employs that cry – but this, this is much bigger than what I imagine that you are thinking this to be.

        1. 21.1.1.1

          It seems that we just have a difference of opinion. I believe that the current state of eligibility jurisprudence is the result of intelligent actors acting in good faith to try to address a difficult issue. You seem to believe that this is not the case.

          But we both agree that additional development is needed. I choose to focus on trying to figure out how to obtain more clarity.

          1. 21.1.1.1.1

            You seem to want to imply that my actions are not geared to how to figure out how to obtain more clarity.

            That would be a mistake.

            And yes, I do believe that the current mess is NOT tied to intelligent actors acting in good faith to try to address a difficult issue.

            The current mess is a direct result of “intelligent” actors trying to legislate from the Bench in order to reach their desired Ends.

            Maybe you should read Judge Mayer’s rant again.

          2. 21.1.1.1.2

            I choose to focus on trying to figure out how to obtain more clarity.

            Good for you, Jeremy.

            I guarantee that you will not get this clarity from “anon” or any of his buddies who tr0 ll here. I’ve asked them for years to come up with clear tests to achieve what they think is fair and they can’t (or won’t) do it.

            1. 21.1.1.1.2.1

              I’ve asked them for years to come up with clear tests to achieve what they think is fair and they can’t (or won’t) do it.

              Well that’s total B$.

              The clear test is to follow the law as written by Congress.

              Yes. It’s that simple.

              What YOU want is something completely different (and given your cognitive dissonance and your own refusal to explain your dichotomy of wanting to deny patent protection to a form of innovation MOST accessible by he non-wealthy at the same time accusing anyone of wanting patents to be “grifters” at the same time that you (supposedly) are a patent attorney obtaining patent protection for clients, well…. you can just take your oh so typical Accuse Others meme and put it where it belongs.

      2. 21.1.2

        I think the person that needs to revisit their thinking is you, Jeremy. Maybe we could go through some opinions together and could show you were they are clearly acting as activists and not judges applying the law.

        Etc. Face it, the CAFC was stacked by Obama. We have perhaps the worst group of people any appellant court in the history of the US has ever had. And some of these people were known for their poor character prior to appointment, e.g., Stoll.

        1. 21.1.2.1

          Even assuming arguendo that some judges are acting as activists, this doesn’t necessarily mean that they are not intelligent, right? (I’m not agreeing that any are acting as activists, just noting that it doesn’t necessarily speak to your original suggestion re their intellects.) Ditto for character (and I’m certainly not agreeing that any have poor character).

          As for going through opinions to discuss, sure, send me an email at jeremy dot doerre at gmail and let me know what city you are in and I’ll be happy to buy you lunch and discuss next time I am in town. I’m always interested in hearing disparate perspectives, and in hearing about cases that might be a vehicle to try to get additional clarity on eligibility issues.

          As to your comments below, I’m not really sure where the ire is coming from, and I’m pretty sure my prior comment did not advance the position you seem to be ascribing to me (I currently express no opinion one way or another on that position).

          Overall, the point I was trying to make is that Federal Circuit judges are very intelligent, so if your theory of Federal Circuit eligibility jurisprudence relies on an assumption that this is not the case, I’m not sure I buy it. As I noted above, I believe that the current state of eligibility jurisprudence is the result of intelligent actors acting in good faith to try to address a difficult issue, although I understand that many do not feel that way.

      3. 21.1.3

        Jeremy, your post is offensive. You say that because people are behaving in a civilized manner doing their daily duties and that they seem intelligent that this means that they are actually asserting their power (their opinions) in a similar fashion.

        No person that is educated would agree with you. Not one. History is filled with people like you describe that then use their real power in terrified and inhumane ways. The fact that there is a veneer of civility is meaningless to analyzing their opinions.

        1. 21.1.3.1

          The offensive item is the attempt to use “civility” as an excuse for not employing critical thinking (and to not BE critical when clearly the situation calls for criticality).

          There is nothing wrong — per se — with wanting to enjoy a “civil” environment. There is everything wrong with using “civility” as an excuse to condemn that which should be condemned.

          1. 21.1.3.1.1

            … everything wrong with using “civility” as an excuse to NOT condemn that which should be condemned.

            1. 21.1.3.1.1.1

              …and it should be noted (given Jeremy’s posts), that Jeremy is not one of those that is trying to use “civility” as an excuse to NOT condemn that which should be condemned.

              Jeremy’s problem is in not seeing why what should be condemned is condemnable in the first place. He has failed to grasp the fact that personal “politics” (read that as philosophies) have very much intruded where they should not. We, as attorneys, have an ethical responsibility** to NOT look the other way when the Supreme Court gets things so very wrong.

              **I re-invite attorneys to look again at their State Oath of Office. To date, only the Commonwealth of Massachusetts has a (remotely) arguable case for treating the Court as a client as opposed to reminding the Court that they TOO are subservient to the Constitution (and its checks and balances of all three branches).

      4. 21.1.4

        Jeremy, it seems to be an unavoidable human tendency of some who post blog comments anonymously to indulge in non-substantive rudeness and personal hostility formats [which discourages useful comments by others] and then to incredibly assert that such behavior is somehow more effective or credible. Just ignore it and provide substantive inputs instead.
        Also, of course, given the demonstrated lack of internet security, no attorney with any hope of representing any client before any judge would engage in insulting that judge on public media even anonymously.

        1. 21.1.4.1

          +1

          1. 21.1.4.1.1

            -2

        2. 21.1.4.2

          Q: What is worse than Paul Morgan’s rather officious “indulge in non-substantive rudeness and personal hostility formats”…?

          A: Paul Morgan’s indulgence in his own lame non-substantive snide comments and running away from actual points of discussion put directly to him, while pretending that using his real name carries any credibility or effectiveness.

          Paul, being sanctimonious and overly ‘polite’ while avoiding the tough issues (and being tough when being tough is proper) is no way to go through life.

          I willl put my posts against yours for substance, credibility, and effectiveness any day of the week.

          1. 21.1.4.2.1

            Further,

            I would bank on being the person more so than anyone else on this blog that seeks to “ENcourage useful comments by others,” challenging people to think critically and do more than v0m1t forth propaganda positions and mindless crud.

            Maybe you don’t understand what “useful comments” are…

            It is NOT useful to be “polite” to a fault or to not engage on the merits of the law or to ignore (repeatedly) points presented as to the law, to history, to the nature of innovation, or to other factual and legal matters.

            It is also not useful to think that “anonymous” means no value and that “real name” means value. Value has no such correlation.

  9. 20

    To summarize re comments here, the “printed matter” doctrine is not one of the established list of unpatentable subject matters from Sup. Ct. decisions* that are judicial exceptions to the literal scope of 101. Rather it was established by CCPA decisions [and arguably narrowed in a few subsequent CAFC decisions]. Thus that doctrine really needs a good cert petition by someone to settle its validity or scope. [But hopefully in a much better case than this one.]
    A secondary issue is the apparently novel-here use of that “printed matter” doctrine for step 2 of the current Sup. Ct. 101 test rather than just 103. But if it is truely unpatentable subject matter, why does it not fit the requirements of step 2?

    *E.g.,the Supreme Court in Diamond v. Chakrabarty [right after the famous language so frequently misleadingly partially quoted] stated that: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). “

    1. 20.1

      Any Supreme Court case after 1952 is somewhat suspect, as the notion of a broken scoreboard MUST be critically evaluated: (ultra vires, violation of separation of powers, infirmity for lacking present case or controversy (the bastion of “authority” tied to a projective, subjective and conjectural “MAY someday not promote”), and Void for Vagueness issues that the re-writing of statutory law by the Court engenders.

    2. 20.2

      [T]he “printed matter” doctrine… really needs a good cert petition by someone to settle its validity or scope. [But hopefully in a much better case than this one.]

      Agreed on both counts.

    3. 20.3

      “[T]he “printed matter” doctrine… really needs a good cert petition by someone to settle its validity or scope”

      Not really. 1. it’ll never get one because nobody will take one up and or receive cert in your lifetime and 2. it’d be a waste of time.

  10. 19

    Happy 2019 to all the regulars here and thanks to our hardworking host!

    Rare is the forum where a narrow, but economically important philosophy can be debated year-in and year-out without decent to incoherence….ahem….mostly.

    In this instance, the Printed Matter Doctrine fails, because the markings are vital to the use of the substrate (i.e. no new markings, no utility from the substrate) and Mayer’s notion that influencing behavior as a result of a method cannot support a patent is something iconoclastic so far as I can tell…

    What does work here?

    A simple analysis: it’s a method. Doing the method produces information. The information is consumed by persons.

    Should be ineligible!

    1. 19.1

      Your flaws are more than self-evident.

      What you would have as ineligible becomes — according to your own “dogma” completely eligible if the game is converted from a physical game of physical dice to an electronic game with electronic dice (in which the ‘produced information’ is produced not for human consumption, but instead is produced (directly) for machine consumption.

      This flaw of yours traces back to your own inadequate understanding of utility (and the plain fact that utility must resolve down to human “consumption” at some point in order for utility to be reached in the patent sense.

      1. 19.1.1

        If the method has a result, and that result is information, and the utility of the method arises from machine consumption of the information, the method should be eligible, including in a game.

        Of course, the method must be new, non-obvious, and fully described, all of which are taller hurdles for information inventions than physical inventions.

        I don’t understand your thing with utility. A sharper blade is more useful, period, before any “consumption” of the utility by anyone.

        1. 19.1.1.1

          I don’t understand your thing with utility.

          -it’s not my thing.
          -you will remain disassociated with patent law fundamentals until you do get the utility thing.

    2. 19.2

      A simple analysis: it’s a method. Doing the method produces information. The information is consumed by persons. Should be ineligible!

      I used to think that this was uninformed musing, but I am increasingly coming around to your thinking here, Martin. I have to say, however, I wish you would tie this argument into more of a statutory basis. Please allow me to sketch such a statutory tie in:

      Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

      [35 U.S.C. §101, emphasis added]

      Patent infringement is a species of commercial tort. Hoover Group v. Custom Metalcraft, 84 F.3d 1408, 1411 (Fed. Cir. 1996). The common law of torts (with only limited exception) does not allow recovery for “purely psychic injury.” Roach v. Stern, 252 A.D. 2d 488, 492 (NY App. Div. 2d 1998). “Utility” and “injury” are flip sides of the same coin. That is why the “useful arts” are coextensive with the “technological arts.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979) (Rich, J., “[T]he present day equivalent of the term ‘useful arts’ employed by the Founding Fathers is ‘technological arts'”).

      In other words, just as a purely psychic injury is not the sort of injury cognizable under tort law, so too a purely psychic utility is not the sort of utility cognizable under patent (a species of tort) law. Therefore, where the inventor discovers information (or a process for generating information) that interacts with a machine to create a new technical effect, the information (and the overall invention) is “useful” within the meaning of the term as used in 35 U.S.C. §101. Where, however, the new information is merely consumed by a human, such that the human feels happier, safer, better informed (etc.), this sort of purely psychic utility is not “useful” in the 35 U.S.C. §101 sense.

      Despite my (perhaps tediously) long presentation of this argument, this gets at no more than the same insight that Random Recently articulated in his 30 Dec 2018 post #10 on another thread. As he very sagely observes, “[s]aying that one has improved the entertainment in wagering is like arguing that one can patent the Mona Lisa because there is entertainment value in viewing it, or that one could patent a religion because of the mental assuredness it gives one.” This sort of purely psychic utility is simply not the sort of thing that the patent laws are drafted to cover.

      1. 19.2.1

        Utility” and “injury” are flip sides of the same coin. That is why the “useful arts” are coextensive with the “technological arts.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979) (Rich, J., “[T]he present day equivalent of the term ‘useful arts’ employed by the Founding Fathers is ‘technological arts’”).

        Wrong on two important aspects.

        1) Useful Arts is NOT synonymous with technical arts (there is a more recent citation to this effect, although I cannot put my fingers in it at the moment).

        2) utility and injury are NOT flip sides of the same coin.

        Think of the other aspect of Article I Section 8 – the aspect that is geared to expression rather than utility. Surely you recognize that injury occurs for the violations of the protections of expression, and quite a different coin than any violations of the protections of utility.

        Related? Sure. Flip sides of the same coin? Not a chance.

        And be aware of (and beware of) the fallacies in Random’s arguments, as he vemtures into the Wolfgang Pauli arena of “not even wrong” when he attempts to draw legal conclusions on matters already outside of the Useful Arts. It simply makes no legal sense to try to draw patent law “reasoning” with examples clearly outside the reach of patent law (his “new story” in books, any type of art appreciation, and religion ALL F A 1L because of the “not even wrong” aspect.

        Greg, you exhibit more patience than is called for in dealing with people (such as Marty and Random) that start their “theories” outside of the fundamentals of patent law. While perhaps “polite,” you really do not add value with giving these folks the (false) view that they are “on to something.” These folk need to understand and embrace the actual fundamentals of patent law, and as long as they continue down their “path” in the weeds — and they do so with your “encouragement” — they will not find the real path.

      2. 19.2.2

        While other comments are hung up in the filter, let me add a note to:

        Patent infringement is a species of commercial tort. Hoover Group v. Custom Metalcraft, 84 F.3d 1408, 1411 (Fed. Cir. 1996).

        While I have to check the case for the context, I would caution that the patent right is MORE than the adforded view that a specific infringement allegation may be a business tort.

        Viewing the patent sphere as ONLY a matter of a business tort misconstrues EACH of the property nature of the patent right, the nature of trespass, the nature that a patent right is a negative right (contrasted with a “positive right” of engaging in business, or making a profit), and the fact that patent law has NO “must make” (or engage in business) for the right to exist and for the property right to be violated in some manner.

        Hewing to the “business tort” angle only plays to the Efficient Infringer mantra.

        Be aware and beware of that.

      3. 19.2.3

        On re-reading my 19.2, I rather wish that I had left out the sub-arguments related to patents as a species of commercial tort, and utility as the flip side of injury. They are not inaccurate, but they are dispensible to the real argument.

        The only important thing to know in order to understand my statutory argument for Martin’s thesis is that “useful” in §101 takes its meaning from Art. I, §7, cl. 8. As Judge Rich explained, “useful” here means “technological.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979). Once one understands this (as with so much about interpreting Title 35, following the subtlety of Judge Rich’s thinking is invaluable), it becomes comparatively simple to sort out which claimed inventions satisfy the §101 “useful” requirement. Purely psychic “utility” is not patentable “utility.”

        1. 19.2.3.1

          this is one source:

          See link to patentlyo.com

          Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005).

          Our determination is that there is currently no judicially recognized separate “technological arts” test to determine patent eligible subject matter under § 101. We decline to create one. Therefore, it is apparent that the examiner’s rejection can not be sustained.

          1. 19.2.3.1.1

            By the way, the Lundgren decision distinguished the underlying cases in the Bergy case, and dispelled the dicta in that Bergy case.

            Note as well that the Bergy case you cite to was PRE-Chakrabarty and PRE-Diehr which cabined the views that the then Flook case had attempted to impose.

            One does need to0 keep in mind the political (read that as philosophical) winds of the various Justices (and judges) involved in this flux of time before “declaring” that Useful Arts and technical arts are the same things.

  11. 18

    Mayer’s concurrence states: “subject matter eligibility under 35 U.S.C. § 101 is a pure question of law…”

    How does Mayer reconcile that with granite precedent:

    “We note also here that when we, the district courts, and parties refer to the ‘ordinary meaning’ of a claim term, such references are short-hand for the appropriate connotation under the law: the meaning, to a person of ordinary skill in the art”. Teleflex v. Ficosa, 299 F.3d 1313 (2002).

    Is Mayer versed in the terminology of all world’s technical artisans? If not, how does Mayer properly interpret the claims? Mayer and the rest of the CAFC judges must be marvels of knowledge that they are capable of interpreting all claims as all relevant artisans would.

    How is this not judicial hypocrisy or arrogance?

  12. 17

    Thank goodness the Federal Circuit is keeping the fundamental building blocks of gambling free to the huge universe of gambling innovators. Because this kind of patent could have ground the economy to a halt. Can you imagine how tragic it would have been if a game like Monopoly had been patented? The horror!

    1. 17.1

      Which it was.

      1. 17.1.1

        Frankly, section 101 should be taken out of the court’s hands and left to the PTO as the only decider, but that’s preaching to the choir.

  13. 16

    I don’t see how this decision has much to do with gaming. Mayer may want to use it for that, but the other judges didn’t let him.

    Use of a patented article of manufacture infringes an article of manufacture claim. A novel arrangement of pips would not be given patentable weight when considering novelty/non-obviousness of a claim to dice unless there was some relationship between the arrangement and a structure of the dice that together were useful. However, printed matter has long been given patentable weight in method claims (in this practitioner’s opinion – as long as a step depends on the printed matter).

    Someone drafted claim 1 to cover all practical (i.e., wagering) uses of dice. The claim barely goes beyond “using dice, the dice comprising…” There’s no novelty in the use, only the dice. So, the Fed. Cir. clarified that drafting ‘use’ as process alone doesn’t except from the printed matter doctrine – there must be a functional relationship, recited in the claim, between the printed matter and the claimed process.

    Not a controversial decision. Barely moves the needle.

    1. 16.1

      Not a controversial decision. Barely moves the needle.

      If the court had affirmed on the basis of the Board’s §103 rejection, I would agree. As it happens, however, both the majority and the concurrence purport to decide this case on §101 grounds. The extension of printed matter into the §101 analysis is a new development.

      Whether it proves to be important or not remains to be seen. It is too soon, however, to say whether it will “[b]arely move[] the needle.”

      1. 16.1.1

        If the court had affirmed on the basis of the Board’s §103 rejection, I would agree. As it happens, however, both the majority and the concurrence purport to decide this case on §101 grounds. The extension of printed matter into the §101 analysis is a new development.

        While I agree that this could easily have been under 103, Electric Power Group could be seen as an extension of printed matter into 101. If you look at their claims, they don’t recite any new functionality, just “gather data, analyze data, present data”. All of the utility of their claims come from what the data is. But disregarding all of that ends up with an abstract idea that doesn’t explain how the data is analyzed and presented. It wasn’t explicitly applying the printed matter doctrine, but doing so gets you to the same, and I’d say reasonable, result.

        1. 16.1.1.1

          “Reason” has very little to do with the current mess.

          What we have is desired Ends regardless of Means – never a good situation when it comes to the law.

        2. 16.1.1.2

          Electric Power Group could be seen as an extension of printed matter into 101… It wasn’t explicitly applying the printed matter doctrine, but doing so gets you to the same… result.

          In a system that operates based on precedent, there is a world of difference between “could be seen as”/”gets you to the same result as” on the one hand and “explicit holding that” on the other hand. “Gets you to the same result as” can be later distinguished as rhetorical excess or lapsus lingui. “Explicit holding” cannot.

          1. 16.1.1.2.1

            Lapsus lingæ.” Mea culpa.

            1. 16.1.1.2.1.1

              Third time’s a charm. Lapsus linguæ.

    2. 16.2

      “Not a controversial decision.”

      In terms of outcome, maybe. In terms of legal reasoning, maybe not.

      1. 16.2.1

        The “legal reasoning” displayed (especially in the concurrence) is worse than a debacle.

        It truly is grounds for removing this Judge from the bench. CLEARLY, he had made up his mind as to what the law should be and does not give a rip about what the law IS.

        He even trots out the “we hold ourselves to panel decisions” (was ON the Berkheimer panel), and then completely disregards his own words.

        I am quite used to that from the likes of Malcolm in the comment sections of this blog, but this behavior by a sitting judge is beyond reprehensible.

        Anyone drawing Judge Mayer on a panel should make an automatic motion to have the Judge recuse himself based on his own prior beliefs. There is no way anyone on a panel will have a fair and impartial hearing based on the beliefs and feelings shared by the Judge in this instant case.

  14. 15

    I don’t see how this decision has much to do with gaming. Mayer may want to use it for that, but the other judges didn’t let him.

    Use of a patented article of manufacture infringes an article of manufacture claim. A novel arrangement of pips would not be given patentable weight when considering novelty/non-obviousness of a claim to dice unless it there was some relationship between the arrangement and a structure of the dice that together were useful. However, printed matter has long been given patentable weight in method claims (in this practitioner’s opinion – as long as a step depends on the printed matter).

    Someone drafted claim 1 to cover all practical (i.e., wagering) uses of dice. The claim barely goes beyond “using dice, the dice comprising…” There’s no novelty in the use, only the dice. So, the Fed. Cir. clarified that drafting ‘use’ as process alone doesn’t except from the printed matter doctrine – there must be a functional relationship, recited in the claim, between the printed matter and the claimed process.

    Boring decision. Barely moves the needle.

  15. 14

    Talk about fixing a problem that’s not there. Gaming patents have been around for DECADES. The patent examining corps in the gaming art units are very good for the most part at searching and applying prior art in this crowded field. The gaming arts does not have any problem with overly broad patents being issued. Generally, the patent claims that issue end up being directed to the specific game feature disclosed. However, with two horrible cases, In re Smith and this one, the whole industry is upended, when there was no need. I know certain commenters here on this blog are fine with that. But this is has just reached new levels of crazy.

    1. 14.1

      The gaming industry has been upended?

      LOL

      The horror.

    2. 14.2

      Where in section 101 does it say “any method … except games”? No. Where.

      1. 14.2.1

        Where does it say “any process … except thinking processes”?

        I know: too nuanced of an answer for you.

        1. 14.2.1.1

          Not nuanced at all.

          This recalls your goal post moving moves wherein you change claims that may contain an element of thinking into some other thing that occurred TOTALLY in the mind.

          The problem of course with your strawman (since you were always the only one to advance that ‘argument’) is that something TOTALLY in the mind does not satisfy the other portion of 101: having the utility of the Useful Arts.

          Of course, this point has been presented to you many times in the past when you moved the goalposts with your strawman.

          1. 14.2.1.1.1

            I note that a very similar “goal-post” moving from something that may include mental steps (and still distinguishing from TRUE mental steps from that which a computer does), to something totally in the mind has been engaged in above by Greg in Greg’s desire to give weight to the “in the weeds” musings of Marty.

            It is a bit of a strawman to move the goalposts from a claim that may have as a portion some aspect of human cognition to a claim TOTALLY in the mind, and then knock down that “TOTALLY in the mind” position as if that were equal to a claim NOT totally in the mind. Marty’s musing do not even require such “TOTALLY,” so even moving the goal posts does not address Marty’s premise.

            This tends to confuse and conflate a valid argument that something that IS totally in the mind lacks the prerequisite utility satisfying the Useful Arts (non-Fine Arts) requirement.

        2. 14.2.1.2

          “rolling the set of dice; and

          paying a payout amount if the at least one wager occurs.”

          Do you English?

    3. 14.3

      I’ve worked with the gaming industry (manufacturers for big casinos) a little bit. I agree that the whole field of patents in gaming had working very well and it definitely pushed the companies to innovate.

      Now this abomination.

      1. 14.3.1

        100% pure horseshit.

        1. 14.3.1.1

          Your cognitive dissonance is showing.

          Again.

  16. 13

    The functional relationship is with the human brain. S0–what we have here is a case where they are trying to call figures that interact with a human brain printed matter. Be afraid. Be very afraid. The anti-patent judicial activists are on the march.

    (There is no doubt in any person’s mind that knows anything about science and technology that one of the biggest growth areas in innovation over the next 100 years is technology to organize human behavior.)

    1. 13.1

      In any meaningful sense, what technology is there that does NOT in some way attempt to “organize human behavior” let alone BE “one of the biggest growth areas in innovation over the next 100 years.”…?

      One of the critical aspects of “any sane patent system” is the realization that the bedrock requirement of utility in a very real sense MUST be tied to this “organization of human behavior.”

      You do not have utility in the patent sense if you cannot effect (have some nexus with “organize”) human behavior because the patent sense of utility is WED to human behavior.

      A definite sign of anti-patent animus is when a bedrock requirement (such as utility) is used as a denial point of allowing patents.

      1. 13.1.1

        Yes anon. And, here there is the specter of this organize human behavior to continue on. Note too that in Alice the “exceptions” were tied to the text of the Constitution. Here, it is not clear on what basis that this new exception that is trying to born comes from. It is not the preemption concern nor the tend to promote concern. It is appears to be a contention that it is not technology, which of course on its face is absurd for many interfaces whose goal is to organize human behavior.

        The group of anti-innovation, anti-patent judicial activists are at it again with trying to bring about a new disaster.

        1. 13.1.1.1

          It is appears to be a contention that it is not technology

          Borrowed – no doubt – from certain “friends of the Court” that have attempted to belittle and denigrate the difference between Useful Arts and “technical arts.”

          This is easily traced to the large multi-national corporations in their desire to HARM-o-nize patent law regardless of our Sovereign’s choice to have the broader “Useful Arts” (which should be read as anything outside of the Fine Arts).

  17. 12

    Here:

    “The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
    (a)
    discoveries, scientific theories and mathematical methods;
    (b)
    aesthetic creations;
    (c)
    schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
    (d)
    presentations of information.”

    is what, in 1973, the EPC ruled out as ineligible subject matter. Do you see in there the mention of mental acts, playing games and doing business?

    Looking in on this decision, from Europe, I see an emerging international consensus on eligibility, built around Article 52(2) of the EPC.

    1. 12.1

      You forgot the “per se” and “as such” caveats.

      You also forgot that the US Sovereign (no matter the attempted legislating from the bench) has chosen a different paradigm with our Useful Arts (and that NOT being some “technical arts” thingie).

    2. 12.2

      Yes, I think that as a descriptive matter, you are correct, Max. One does observe a trend toward substantive harmonization between the U.S. and EP in recent years.

    3. 12.3

      The funny (in a sad way) thing, MaxDrei, is that WITH the caveats that you have forgotten to include, business methods and software innovation practically enjoys a more robust protection NOW in the EPO than the (lack of certainty and panel to panel flipflopping) that we here in the States have (notwithstanding our Sovereign’s more expansive choice of Useful Arts as opposed to some technical arts designation).

  18. 11

    I’m not sure I agree with the printed matter logic on this one. Let’s assume no printed matter change. The claims would still be limited to betting on one of the following: a first face on the first dice, a set of two faces on the second dice, or a set of three faces on the third dice. That’s a concrete method step change, which may be obvious or it may not be, but I don’t think the printed matter doctrine applies: it’s a command to make a 1/6th, 1/3 or 1/2 likelihood bet.

    It’s one thing to say “making a 1/6th, 1/3 or 1/2 likelihood bet lacks utility, or is ineligible” but it’s another thing to say it’s obvious over prior art because it is printed matter not entitled to weight.

    But then again, the whole printed matter doctrine is really just a tarted up judicial exception isn’t it? Old book with new non-obvious story written in it is still unpatentable because we ignore the non-obvious story and reject under 103 sounds an awful lot like “the system is ineligible abstract information fixed in a conventional book, which is not significantly more” under 101. There is less statutory support for a printed matter exception to 103 than there is to a judicial exception to 101. Just another example of the federal circuit being forced to generate a ridiculous roundabout rule to come to the clearly correct answer because they didn’t want to apply the actual law they had before them.

    1. 11.1

      Just another example of the federal circuit being forced to generate a ridiculous roundabout rule to come to the clearly correct answer because they didn’t want to apply the actual law they had before them.

      By this I mean, the courts saw that if you claimed a creative story in a book, pretty soon every novel would attempt to be patented, and the courts would be spending a bunch of time trying to determine when fiction became non-obvious when it was clear that fictional writing (despite it clearly having “utility” within some non-patent-act meaning of the term) wasn’t the type of thing meant to be patented.

      Rather than making the correct law under the correct statutory section – this is not eligible for patenting under 101 – the CAFC created a legal fiction under 103 to achieve the same result, nothing would issue because of novel, non-obvious writing. Now they’re transposing their previous 103 logic back into 101 where it should have started out and people are shocked, shocked I tell you.

      The printed matter doctrine is actually a 101 doctrine. It is a statement that departure from the conventional must be eligible in order for the claim to be eligible, which is nothing more than any other 101 case states – departing from a conventional computer by programming it to perform intermediated settlement is ineligible because intermediated settlement is ineligible. Similarly, departing from paper, books, or other conventional mediums by placing new markings with different meanings to humans is ineligible.

      1. 11.1.1

        Wolfgang Pauli: sorry Random, your not even wrong.

        That is to say, that you are so far out of the ballpark that saying that you are wrong gives you too much credit.

      2. 11.1.2

        Rather than making the correct law under the correct statutory section – this is not eligible for patenting under 101 – the CAFC created a legal fiction under 103 to achieve the same result, nothing would issue because of novel, non-obvious writing.

        I am sure that when you wrote “the CAFC created” that you really meant the CCPA. I wonder, then, what you would have had the CCPA do differently back when In re Sterling, 70 F.2d 910, 912 (C.C.P.A. 1934) first instantiated the printed matter doctrine in our patent law? What statutes and precedents should they have cited on their way to deciding that case—not as a matter of anticipation—but rather as a matter of subject matter eligibility?

        I am happy to agree that the printed matter doctrine is a species of subject matter eligibility test, but in practice it works much better when applied against §§102/103 than against §101. The essence of the rejection is that (e.g.) tearable check stubs have already been invented, so if the only difference between your claimed tearable check stub and the prior art tearable check stub is the printing on it, then the real objection to your having the claim is one of novelty. It makes sense, then, that this rejection should be framed in regards to the part of the statute dealing in novelty, rather than in the categories.

        1. 11.1.2.1

          Eligibility is not just categories.

          Eligibilty has one other major section: utility.

          MOST ALL the current day judicial nonsense would be eliminated if the actual words of Congress (and NOT the scrivining of the Supreme Court) were treated as the basis of law.

          As to your CCPA view, this is entirely captured in my simply set theory explication of the exceptions to the judicial doctrine of printed matter.

      3. 11.1.3

        The printed matter doctrine is actually a 101 doctrine.

        This statement crystalizes the confusion at work in the Guldenaar case. The argument is that printed matter concerns subject matter eligibility, and §101 concerns subject matter eligibility, and therefore, printed matter concerns §101.

        This is a fallacy. The first amendment codifies civil liberties, and the fourth amendment codifies civil liberties, but no one would be so confused as therefore to contend that the first amendment is the fourth amendment.

        Section 101 is intended to do some work in distinguishing the sort of claims that we want to enforce from the sort of claims that we do not want to enforce. Section 101 is not intended to do all of that work. Attempts to make §101 do work that it was not meant to do inevitably end poorly.

        In the instant case, the claims have so many infirmities (utility, novelty, obviousness) that it is fine to tank them on multiple grounds. Guldenaar is, however, a precedential decision, so if you make a mistake in choosing the grounds or applying the analysis, the mistake can carry over into other circumstances in which the mistake would be more untoward. It is too soon to say whether the mistake in this case (applying printed matter in the §101 context) will show up to make mischief in future cases. It is not a good start, in any event.

    2. 11.2

      The claims would still be limited to betting on one of the following: a first face on the first dice, a set of two faces on the second dice, or a set of three faces on the third dice. That’s a concrete method step change, which may be obvious or it may not be, but I don’t think the printed matter doctrine applies: it’s a command to make a 1/6th, 1/3 or 1/2 likelihood bet.

      It’s one thing to say “making a 1/6th, 1/3 or 1/2 likelihood bet lacks utility, or is ineligible” but it’s another thing to say it’s obvious over prior art because it is printed matter not entitled to weight.

      Hm, I think that you are making the printed matter analysis more complicated than it needs to be. The “printed matter” here is not only the markings on the dice. The whole wagering scheme is “printed matter.”

      In other words, dice games have already been invented. The choice of the precise subject of the wager is (however constituted) functionally unrelated to the technological invention. Therefore, you give no patentable weight to the content of the wagering scheme set out in the claim. The only parts that bear patentable weight are the “wagering,” “rolling,” and “paying” steps, and those are—beyond dispute—frankly anticipated. At the point where one is considering the obviousness vel non of the precise probabilities of a given bet paying off, one has taken a wrong turn by granting patentable weight to a limitation that deserves none.

    3. 11.3

      RG, one is easily mislead into an overly narrow reading of a claim element like that here to: “at least one of the following: …. OR any combination thereof. ” Nor does a proper reading of the full scope of this claim require proportional payouts.

    4. 11.4

      This should not be a printed matter issue! The markings on the decision are simply a way to turn a mechanical random number generator frequently used to generate 6 different results with equal probability into one which provides two different results with either a 1 in 6, 1 in 3, or 1 in 2 probability. This is programming in hardware. Because dice with multiple sides having the same markings are well known in the prior art, it is simply the addition of well-known, conventional steps to carry out an abstract method.

      The fact that the justices chose to view this as a printed matter issue simply shows they have as little understanding of mechanical computing as they do of electronic computing.

      1. 11.4.1

        Doh – should have been “markings on the dice”, not “markings on the decision”

  19. 10

    I think Mayer’s categorical (“Second, claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”) is probably true. I’m not sure that you even need to reach the judicial exception question.

    Improvements in wagering games lack utility within the meaning of the term in the patent act. Saying that one has improved the entertainment in wagering is like arguing that one can patent the Mona Lisa because there is entertainment value in viewing it, or that one could patent a religion because of the mental assuredness it gives one.

    That being said, analogizing a wagering game to a contract with conditional outcomes that is the kind of legal operative act that is a judicial exception to 101 is fine too, I guess.

    1. 10.1

      Improvements in wagering games lack utility within the meaning of the term in the patent act.

      +1

    2. 10.2

      Never mind the fact that kids around the world have rolled three dice and wagered that one would turn up a six which is enough to turn this p.o.s. claim into indefensible cr@p for most reasonable adults. Good lord where are the sanctions.

  20. 9

    Great decision. The handwringing below by the worlds whiniest (and shallowest) patent attorneys is priceless.

    Yes, let’s bet all the remaining credibility that’s left in this profession on this total piece of s h -t application on … dice with “new” markings. What could go wrong? Nobody can predict! Maybe Dennis will grow a pair in 2019 (pun intended) and start taking some of his know-nothing commenters to task instead of encouraging their mindless feces-throwing and crying. Yes I’m looking at silly Greg DeL in particular.

    1. 9.1

      Yes I’m looking at silly Greg DeL in particular.

      Greg, you have been “one-bucketed.”

  21. 8

    Significantly…, the Court has never suggested that the “clear and convincing” standard applies in eligibility determintions…

    Mayer, J., concurring, slip op. at 2

    Is this observation accurate? Even if so, is it relevant?

    Near as I can tell, every SCotUS case concerning the clear & convincing standard is an anticipation case (i4i §102(b), Radio Corp. §102(g)(2), Morgan §102(g)(1)). In other words, Judge Mayer could just as accurately say that the Court has never “suggested” that c-&-c applies to enablement, or clarity, or obviousness, or double patenting, etc. Why single out eligibility in this manner?

    1. 8.1

      Good point Greg.

      “Why single out eligibility in this manner?”

      Because his is a disingenuous, results-driven opinion.

      Sheesh.

  22. 7

    Our courts are a disgrace.

    1. 7.1

      “Science is more than a body of knowledge; it is a way of thinking.” What we have is bunch of dim bulb judges that wouldn’t know an innovation if it bite them in their a ss. Just lowlife judges.

    2. 7.2

      You know extending “the exceptions” to methods of organizing human behavior is unquestionably unconstitutional. A reference is being made to a concurring opinion in the minority. And the basis of the exceptions is that there is a claim that they tend not to promote.

      The justices and judges are just outrageous.

  23. 6

    >>Here, Judge Mayer argues for a categorical exclusion to the patenting of games — “claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

    So the little tiny intellects of the peon judges don’t get that all technology is about influences human behavior. What gives these dim bulbs the egos to speak? Thanks Obama for putting about seven dimwits on the CAFC (I know that this dimwit was already there.)

  24. 5

    Along the lines of the Rule of Law recognizing the difference between patent eligible and patentable, does anyone see the (obvious) problem with the court’s writing of:

    The examiner rejected claims 1–3, 5, 7–14, 16–18, and
    23–30 as being directed to patent-ineligible subject matter
    under § 101. The examiner concluded that the claims
    were directed to the abstract idea of “rules for playing a
    game,” which fell within the realm of “methods of organizing
    human activities.” J.A. 35, 85. The examiner also
    concluded that the claims were unpatentable for obviousness
    in view of U.S. Patent No. 4,247,114 (Carroll) over
    “matters old and well known to dice games,” applying the
    printed matter doctrine. J.A. 88.

    On appeal, the Board affirmed both rejections.

    Given that this court (supposedly) is NOT re-writing the law, how exactly is a new claim found to be obvious over a (valid) patent AND also be ineligible?

    The valid patent that was proposed to make obvious this application was granted January 27, 1981 (and Congress has not rewritten 35 USC 101 since that time).

    What should be abundantly clear here is that Common Law law writing is what is being used to rewrite statutory law. (for example, see the adulation given to In re Smith, 815 F.3d 816 (Fed. Cir. 2016) — NOT a law written by Congress.

    The instant court ducks out of this “conundrum” with a dismissive:
    Because we affirm the
    Board’s rejection of the appealed claims under § 101, we
    need not review the Board’s alternative § 103 rejection of
    the claims. We find that the claims are drawn to the
    abstract idea

    Of course, one should realize that the Board (and the CAFC) cannot have it both ways under the Rule of Law.

    This is a sign of a greater problem here: the scoreboard is broken.

    1. 5.1

      More to it on the readily apparent lack of Rule of Law is Judge Mayer’s concurrence:

      First, subject matter eligibility under 35 U.S.C. § 101 is a pure question of law… and ….I cannot agree with the court when it states that the patent eligibility inquiry “may contain underlying issues of fact.

      Second, claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.

      This is a single judge making up law. Statutory law.

      He even has the gall to state:

      Panels of this court, see, e.g.,
      Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir.
      2018), are without authority to disregard established
      precedent. See, e.g., Newell Cos. v. Kenney Mfg. Co., 864
      F.2d 757, 765 (Fed. Cir. 1988) (“This court has adopted
      the rule that prior decisions of a panel of the court are
      binding precedent on subsequent panels unless and until
      overturned in banc.”).

      As he himself attempts that very thing!

      The rest of his rant (and it is a rant) is abject legislating from the bench.

      It’s one thing when on a patent law blog Malcolm runs rampant with the Accuse Others mem – our courts should be held to a higher standard. Mayer is not applying any existing law or even “interpreting” any existing law. He is attempting to fashion a law unto his desired Ends.

    2. 5.2

      ? Whether a prior art patent is valid or not is legally irrelevant [it is a prior art publication for whatever it teaches either way]. The rejections of claims on two different legal grounds is both valid and common. So is the Fed. Cir. only needing to decide only one of those grounds on appeal, as here. Nor is the Court’s re-statement of what the examiner said the opinion of the Court. If you have a point here, no it is not “abundantly clear.”

      1. 5.2.1

        The prior patent is legally recognized as BEING a patent (that is, being to a patent eligible subject matter).

        Yes, it is a legally different question as to whether or not the subject matter of that legally recognized subject matter eligible item reaches to the different legal notion of obviousness or not.

        The bottom line remains though: what was eligible remains eligible. The notion here is that BOTH items are to a field of endeavor of subject matter eligible material. It is only through a deliberate eyes-closed approach (akin to obtaining a particular desired Ends, regardless of the means) that such is not only not noted, but made to be inconsequential.

        THIS is an affront to the Rule of Law.

        1. 5.2.1.1

          How/when did dice games become eligible for (lololololololol!) patent protection? What on earth would be the point of that?

    3. 5.3

      Given that this court (supposedly) is NOT re-writing the law, how exactly is a new claim found to be obvious over a (valid) patent AND also be ineligible?

      This is pretty illogical even for you, anon. First, the patent issued in 1981, so I doubt it was subjected to a current-day 101 analysis, so really you have no idea if it was ever valid.

      Second, even assuming it was valid, the fact that a claim uses patentable things does not make it patentable.

      The computer was patentable. But by the time of Alice it had become so conventional that it no longer imparted eligibility. Do you think the Alice court was under the impression that a computer had not been patented?

      Regardless, I’ve never heard you complain about KSR “rewriting” obviousness despite (valid) patents issuing prior to KSR. I’ve issued obviousness rejections that use pre-KSR patents, am I doing something wrong in that twisted little logic center of yours?

      1. 5.3.1

        I wonder what percent of the readers here can follow RG’s eminently sensible comment.

        New computing devices and new information propagation devices remain as eligible for patenting as ever. But you don’t get to re-patent them by reciting them again in your claim, generically, along with some “new” logic or some “new” symbols printed on them. Of course you don’t get to do that.

        1. 5.3.1.1

          Your penchant for discounting utility is noted.

          As is your canard of “logic.”

          How is your copyright of “just logic” coming along?

  25. 4

    Gracious, one is reminded—from reading the majority and the concurrence—of the proverbial blind squirrel. They each found the right “nut” in the end, but more by accident than analysis.

    I see two good reasons to tank these claims, neither of which is quite the grounds on which the case was decided:

    (1) Under §101, because games of chance are not useful within the sense of the statutory term (Bedford v. Hunt, 3 F. 37 (C.C.D. Mass. 1817)); or

    (2) Under §§102/103, because the claimed dice game involves nothing more than the same steps (“wagering,” “rolling,” “paying”) as prior art dice games. The only difference is the marks on the dice, and those are printed matter, not entitled to patentable weight.

    The grounds on which the actual opinions decided this case are a welter of confusion and sloppy thinking, when everything could have been neatly and cleanly been decided on either (1) or (2) above (#2 would have been especially clear and doctrinely tidy). I am rather disappointed in some otherwise clever judges.

    1. 4.1

      Greg, since you and others here are fond of the “blind squirrel” expression, it should be noted that squirrels find buried nuts not by sight but by smell. Which one could analogize to exposing and disposing of claims like the one here.

      1. 4.1.1

        [S]quirrels find buried nuts not by sight but by smell.

        Duly noted. I will remember next time to analogize to a nose-blind squirrel.

    2. 4.2

      The so-called printed matter doctrine is nothing more than an eligibility analysis. Pretending that it’s anything other than that in 2018 is very f00lish indeed, especially when the identical subject matter eligibility test has been spoon fed to you for about ten years now and the relationship between 101 and PMD is plain as paint (and has also been spelled out for everyone).

      1. 4.2.1

        …and yet, you have consistently refused to embrace the entirety of the PMD that you now seem to what to laud…

        Funny how that works when you see a Desired Ends that you like…

      2. 4.2.2

        That makes sense if one defines printed matter as per se abstract, and the remainder as being potentially conventional with “conventional” being defined as novel and non-obvious. Of course, this type of analysis would invalidate all “computer-readable medium comprising…” claims.

        1. 4.2.2.1

          “one defines…”
          “and the remainder as…”

          Congrats – you just violated the “claim as a whole” notion.

          Eligibility is not an individual piece part item.

          As to “would invalidate all “computer-readable medium comprising…” claims.” — it would do A LOT MORE THAN THAT.

          You broach the “piece part” item prohibition and you land directly into the (false) “logic” of the Big Box of Protons, Neutrons, and Electrons” mentality.

          Each of those items comprise ALL of at least three of the statutory categories (machine, manufacture, composition of matter), and it is ONLY in the configurations of those non-eligible piece part items that anything in those statutory categories may be considered eligible.

          Your “this type of analysis” simply is logically flawed.

          After all, it is entirely conventional to build atoms and molecules from the configuration of those ineligible (per se) items of nature (and such is done strictly according to laws of nature).

  26. 3

    In the spirit of the Grinch, let’s compare this panel to the historical piece written at that other blog (one that lists a bevy of well-known games and such that were fully deemed patent eligible):

    link to ipwatchdog.com

    Did the Rule of Law suddenly change (as in, re-written by Congress, the branch of the government authorized to write the statutory law that is patent law)?

    1. 3.1

      What changed us that nobody gives a sh.t what you or Big Jeans thinks about anything. And for great reasons.

      1. 3.1.1

        You do realize how very wrong you are, eh?

        (for one, YOU continue to show a rather odd obsess10n with “Big Jeans”)

  27. 2

    The interesting thing about the “printed matter” doctrine here is that it is being used to show absence of patentable subject matter, outside of 101, like pure information, for step 2 of the unpatentable subject matter test. This Fed. Cir. appeal decision does not even deal with the parallel 103 rejection below using the “printed matter” doctrine.

      1. 2.1.1

        Indeed, not the first time. One is reminded of Prov 26:11. The printed matter doctrine is supposed to apply to §§102/103 rejections—not §101. Judge Rich is no doubt spinning in his grave. It is as if the court is trying to so badly botch the patent law as to force Congress to intervene with a new statute.

      2. 2.1.2

        My own 2.1.1 notwithstanding, I think that we are both mis-remembering Praxair, PiKa. I went back and re-read Praxair this morning, and it was entirely concerned with a challenge to validity on §103 grounds, not §101. Somehow, I remember Praxair as being the first case to make use of the printed matter doctrine in a §101 context, but this is not true. Perhaps there is another case in which the CAFC pulled printed matter into the §101 analysis, or maybe Guldenaar really is the first such case.

        It scarcely matters which of those is accurate. One way or the other, it is simply a category error to use printed matter in the §101 context. Whether this is the first such occasion, or the second, it should be the last.

        1. 2.1.2.1

          The solicitor seeks some support for sustaining the rejection in In re Sterling, 70 F.2d 910, 21 CCPA 1134, but we find none therein. As we pointed out in In re Jones, 373 F.2d 1007, 54 CCPA 1218, also cited by the solicitor, the Sterling claims were held unpatentable over prior art references. The solicitor seems to urge that we ignore the claim limitations to the indicia and legends because they are printed and because printed matter is not patentable subject matter by itself. For reasons indicated above, we reject that argument.

          In re Miller, 418 F.2d 1392, 1396 (C.C.P.A. 1969)

  28. 1

    Yet again, one panel playing a ping pong game and not giving a prior panel full weight.

    Void for Vagueness should be ringing in everyone’s ears when such panel to panel decisions make a muckery of the Rule of Law.

    1. 1.1

      Consistently inconsistent

      1. 1.1.1

        There’s no “Rule of Law” that requires a panel to follow the dicta of an earlier panel.

        1. 1.1.1.1

          My ever fluid historical pseudonym friend, no one is talking about “following dicta.”

        2. 1.1.1.2

          Also other cases are factually distinguished. The Applicant here admitted everything claimed was well known and conventional except for the markings on the dice. The Decision holds that “the markings on each of Appellant’s dice do not cause the die itself to become a manufacture with new functionality. ”
          [Perhaps the Applicant could have argued the functional advantage for those gamblers too challenged to be able to count the dots on a normal die yet not yet taken to a sanity hearing?]

          1. 1.1.1.2.1

            The Applicant could have argued that or a zillion other different excuses for “functionality” all of which would have been equally worthless. Even Boundy has admitted that the test is meaningless.

            Here’s the most important part: if anybody is going to defend the PMD and its inane “exception” then they have forever lost the right to complain that the term “abstract” is “vague”.

            1. 1.1.1.2.1.1

              Even Boundy has admitted that the test is meaningless.

              Cite please – I am sure that you have not translated the context in your spin.

            2. 1.1.1.2.1.2

              then they have forever lost the right to complain

              Absolute B$.

              Funny how you have always run away from the simple set theory explication of the exceptions to the judicial doctrine of printed matter AND have run away from the problems of the judicial non-defining of “abstract” and now want to confuse and conflate the two as if one balances the other.

              You double down on your doubling down of dissembling.

              Maybe instead of running away (and wanting people to just “sh ut up” about the problems of the Court, you actually try to address the points presented…

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