§ 101 35 USC 101 Alice v. CLS Bank Books 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 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

The USA 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 beneath 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 “cube video games meant to be performed in playing casinos, during which a participant makes an attempt to realize a specific profitable mixture of subsets of the cube.” 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 underneath § 101. The examiner concluded that the claims have been directed to the summary concept of “guidelines for enjoying a recreation,” which fell inside the realm of “strategies of organizing human actions.” The examiner additional discovered that the claims have been unpatentable for obviousness in view of U.S. Patent No. four,247,114 (Carroll) over “issues previous and well-known to cube video games,” making use of the printed matter doctrine.

The Board affirmed each rejections on attraction after making use of the two-step framework specified by 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 “creative idea” enough to rework the claimed summary concept into patent-eligible material. Appellant appealed to the Federal Circuit.

The Courtroom started its evaluation with step one in every of Alice and in contrast the claims of the ’196 software to these in an analogous case by 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 “technique of conducting a wagering recreation” utilizing a deck of enjoying playing cards was drawn to an summary concept. Right here, the Courtroom discovered that Marco’s claimed the “technique of enjoying a cube recreation,” 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 possibilities based mostly on cube fairly than on playing 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 “strategies of organizing human actions” as a “catch-all summary concept” and that the Board improperly makes use of the phrase as an “obvious shortcut.” Though the Courtroom agreed that the phrase “might be complicated and probably misused,” it said that “the place the Patent Workplace additional articulates a extra refined characterization of the summary concept (e.g., ‘guidelines for enjoying video games’), there isn’t a error in additionally observing that the claimed summary concept is one sort of technique of organizing human exercise.”

Beneath 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 situation recite the steps of putting a wager, rolling the cube, and paying a payout quantity if no less than one wagered end result happens. Marco didn’t dispute that any of those have been typical; relatively, Marco argued that “the specifically-claimed di[c]e,” which have markings on one, two, or three die faces, usually are not typical and their recitation within the claims quantities to “considerably extra” 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:

“Declare limitations directed to the content material of data and missing a requisite practical relationship usually are not entitled to patentable weight as a result of such info is just not patent eligible material underneath 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 members 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 “as a result of the summary concept exception doesn’t flip solely on whether or not the claimed invention includes bodily versus psychological 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 “creative idea” enough to “rework” 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, counting 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 problem 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 “might include underlying problems with reality.” Relatively, he contended that material eligibility underneath § 101 is a pure query of regulation and a problem that ought to be resolved “on the earliest levels of litigation, and even earlier than, as on this case from the PTO.” In response to Decide Mayer, “[i]njecting factual inquiries into the part 101 calculus will topple the Mayo/Alice framework and return us to the period when the patent system stifled slightly than ‘promote[d] the Progress of Science and helpful Arts,’ U.S. Const. artwork. I, § eight, cl. eight.” 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, relatively than impact technological change.

Take Away

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


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Robert Schaffer

Robert Schaffer

is an mental property companion at Troutman Sanders. Bob applies greater than 30 years of expertise to IP counseling and litigation. His work consists of patent procurement, strategic planning and transactional recommendation, due diligence investigations, district courtroom patent instances, and Federal Circuit appeals. He recurrently handles complicated and high-profile home and worldwide patent portfolios, mental property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed courtroom instances Bob’s work consists of representing and counseling shopper in ANDA litigations, complicated patent infringement instances and appeals, and multidistrict and worldwide instances. In disputed Patent Workplace issues his work consists of representing and counseling shoppers in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For extra info and to contact Bob please go to his profile web page on the Troutman Sanders web site.

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