Federal Circuit Affirms Rejection of Claims Under § 101

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in In re: Marco Guldenaar Holding B.V., 2017-2465 (December 28, 2018). The patent examiner rejected several of applicant’s patent claims as being directed to patent ineligible subject matter under 35 U.S.C. § 101, and the Patent Trial and Appeal Board (PTAB) affirmed the examiner’s rejections. The Federal Circuit affirmed the PTAB decision. The patent application at issue is entitled “Casino Game and a Set of Six-Face Cubic Colored Dice.” The Court explained the claimed method is directed to conducting a wagering game with dice, which is an abstract idea much like the method of conducting a wagering game with cards the Court previously concluded was an abstract idea in In re Smith, 815 F.3d 816 (Fed. Cir. 2016). The Court noted: “Abstract ideas, including a set of rules for a game, may be patent-eligible if [the claims] contain an “inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” But, the Court concluded, the steps of placing a wager, rolling dice, and paying a payout based on the occurrence of a wagered outcome are conventional steps, not an inventive concept. The Court rejected applicant’s new argument on appeal asserting the claimed dice, which have markings on one, two, or three die faces, are unconventional and are therefore sufficiently inventive to transform the idea into patent eligible subject matter. Specifically, the Court explained the markings on the die faces constitute “printed matter,” contributing no new functionality, and such information is not patent eligible under § 101. The Court held because the only arguably inventive concept is unpatentable printed matter, the claims fail to recite an inventive concept capable of transforming them into patent eligible subject matter. In a concurring opinion, Judge Mayer expressed his views that (1) subject matter eligibility under § 101 is a pure issue of law with no underlying issues of fact, and (2) “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.”