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Card Game – Ineligible Patent Subject Matter Under Section 101

The Court of Appeals for the Federal Circuit expanded the scope of what is considered to be patent ineligible subject matter, denying patent status to a class of process-methods, relating to abstract ideas for unique hair cutting patent claims and, in another appeal, for a unique card game, and declaring that these efforts to secure patent protection are not within the scope of Section 101 of the Patent Act (35 U.S.C. sec.  101) and The Supreme Court case of Alice Corp.  v.  CLS Bank International, 134 S. Ct.  2347, 2355 (2014).  Mr.  Smith’s card game is the subject of this commentary.  In re Smith, Case no.  2015-1664 (Fed.  Cir.  March 10, 2016) (Available Here).

Ray Smith had a patent application for a variation of the blackjack card game.  The method of conducting a wagering game included, in summary, (a) a dealer providing at least one deck of cards, which is shuffled; (b) the dealer accepting a first wager; (c) the dealer dealing only two cards; (d) the dealer examining respective hands “to determine in any hand has a natural 0 count from totaling count from cards”; (e) the dealer resolving any player versus dealer wages; (f) if there is no natural 0 hand, the dealer allows each player to elect to take an additional card; (g) the dealer remaining pat under certain conditions; (h) after all possible playing cards are dealt, the dealer comparing a value in accordance with a certain formula; and (i) the dealer resolving wagers based upon the hand nearest to a 0 value.

The patent examiner had rejected Smith’s claims as being patent ineligible subject matter under 35 U.S.C. section 101 and the Alice Corp.  case.

“The Examiner concluded that the claims represented an attempt to claim a new set of rules for playing a card game which qualifies as an abstract idea.  The Patent Trial and Appeal Board agreed with the Examiner and, in applying the second part of the Mayo/Alice stepwise analysis, the Board concluded that shuffling and dealing cards are conventional in a gambling art and, as such, the claims do not have enough to render the patent claims patent eligible.

The Federal Circuit stated “First, we determine whether the claims at issue were directed to a patent ineligible concept such as an abstract idea.  Second, we examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claim to abstract idea into a patent eligible application.”

The Federal Circuit stated that the rules for a wagering game are comparable to a fundamental economic practice which is been found to be abstract by the Supreme Court in Alice Corp.  Further, the Federal Circuit indicated that there was a number of other cases holding that fundamental economic practices are directed to patent ineligible subject matter.  OIP Techs, Inc.  v. Inc., 788 F.3d 1359, 1362 (Fed.  Cir.  2015); Planet Bingo, LLC.  v.  VKGS LLC, 576 F.  App’x 1005, 1007-08 (Fed.  Cir.  2014).

“That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under Section 101.  We can envision, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice [Corp.].”

Also, Smith’s attack that the USPTO’s 2014 Interim Guidance on Patent Subject Matter Eligibility (the “Interim Eligibility Guidance” or IEG) exceeds the scope of Section 101 and the Supreme Court’s Alice Corp. decision was rejected by the Court.

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