No Fun! U.S. Patent Court Finds Claims to Dice Game Patent-Ineligible

In a decision captioned In re Marco Guldenaar Holding B.V., the U.S. Court of Appeals for the Federal Circuit confirmed that claims to a dice game requiring unconventional dice were not eligible for patent protection. The Court relied primarily on its own previous decision, In re Smith, where it had characterized patent claims to a card game as “effectively, a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the cards.” It found that the dice game claims on appeal were directed to the abstract idea of rules for playing a dice game. Reaching this conclusion was likely easier because the Appellant had conceded the claimed actions, at least when considered at a high level of generality, were conventional.

The Appellant had primarily relied on the unconventionality of the special-purpose dice to render the claims patent-eligible. The Smith panel had suggested that this strategy could be successful when it stated, “We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially” reciting patent-eligible subject matter. However, the panel in Guldenaar Holding concluded that the claimed markings on the dice were printed matter that could never lend patent-eligibility to the claims. To support its conclusion, the Court reasoned that the markings on the dice only communicated information regarding win/loss conditions for wagers. The CAFC attempted to distinguish the present result from previous decisions where arguably printed matter was found to be functionally related to the claimed advance. For example, it had previously held that digits printed on an endless band and their sequence were critical to another invention and volumetric indicia on a specialized measuring cup were functional, not just informational.

Likely because the Appellant did not raise the argument, the Court did not expressly consider whether any unconventional acts performed as a result of the unique game rules and hardware could render the claimed subject matter patent-eligible. However, this pair of decisions suggests that at least some panels of the Court may treat arguments in favor of the subject-matter eligibility of patent claims involving proprietary wagering games with skepticism.

Judge Mayer penned a concurrence further explaining his own views on the test for subject matter eligibility in general and particularly relating to games. He argued that claims involving wagering games could never be patent-eligible because they do not “effect technological change.” The Judge also stated that subject-matter eligibility was a pure question of law lacking underlying questions of fact. He pushed back against the recent trend in Federal Circuit Decisions, like Berkheimer, suggesting that the consideration whether elements beyond an identified abstract idea are routine or conventional are factual inquiries underpinning the ultimate legal conclusion on subject-matter eligibility. Judge Mayer concluded that these decisions amounted to a change in the law that the Court was not authorized to effect. Though his views did not carry the day in this particular opinion, his concurrence indicates that he takes a narrow view of what should be patented. Judge Mayer also appears to be in favor of having the test for subject-matter eligibility be a strong tool for quickly eliminating lawsuits where patent claims that are not sufficiently “technological,” according to his understanding, are being asserted.

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