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In re Marco Guldenaar Holding B.V.

Representative Claim

1. A method of playing a dice game comprising:

providing a set of dice, the set of dice comprising a first die, a second die, and a third die, wherein only a single face of the first die has a first die marking, wherein only two faces of the second die have an identical second die marking, and wherein only three faces of the third die have an identical third die marking;

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.

Posture:

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 13/078,196.

Abstract Idea: Yes

The Federal Circuit confirmed the Patent Trial and Appeal Board’s Step One determination that “the claims were directed to [an] abstract idea” because (1) the claims are directed to conducting a wagering game based on dice; (2) the Patent Office articulated a refined characterization of the abstract idea; and (3) methods performed in the physical world may be an abstract idea. In explanation, the opinion states:

“Appellant’s claimed ‘method of playing a dice game,’ including placing wagers  on whether certain die faces will appear face up, is, as with the claimed invention in Smith, directed to a method of conducting a wagering game, with the probabilities  based on dice rather than on cards.

Appellant contends that the Patent Office uses a certain label—methods of organizing  human activities—as a ‘catch-all abstract idea’ and expresses concern that the Board has used the phrase improperly as an ‘apparent shortcut.’ . . . Here, however, where the Patent Office further articulates a more refined characterization of the abstract idea (e.g., ‘rules for playing games’), there is no error in also observing that the claimed abstract idea is one type of method of organizing human activity.

Appellant also argues that his claimed method of playing a dice game cannot be an abstract idea because it recites a physical game with physical steps . . . We disagree, because the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps. The claimed methods in Bilski and Alice also recited actions that occurred in the physical world . . . The same is true of the claimed method of conducting a wagering game in Smith.”

Something More: No

The Federal Circuit also confirmed the Patent Trial and Appeal Board’s Step Two determination that “the steps in claim 1, considered individually and as an ordered combination, lacked an ‘inventive concept’ sufficient to transform the claimed abstract idea into patent-eligible subject matter” because (1) the claimed activities are conventional; and (2) claim limitations directed to the content of information are not entitled to patentable weight. In explanation, the opinion states:

“The claims here recite the steps of placing a wager, rolling the dice, and paying a payout amount if at least one wagered outcome occurs—none of which Appellant on appeal disputes is conventional, either alone or in combination . . . Just as the claimed steps of shuffling and dealing playing cards fell short in Smith, and recitation of computer implementation fell short in Alice, the claimed activities here are purely conventional and are insufficient to recite an inventive concept.

[Appellant] contends that ‘the specifically-claimed di[c]e’ that have markings on one, two, or three die faces are not conventional and their recitation in the claims amounts to ‘significantly more’ than the abstract idea . . . The markings on Appellant’s dice, however, constitute printed matter, as pointed out by the Board, and this court has generally found printed matter to fall outside the scope of § 101 . . . ‘Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight because such information is not patent eligible subject matter under 35 U.S.C. § 101 . . . Each die’s marking or lack of marking communicates information to participants indicating whether the player has won or lost a wager, similar to the markings on a typical die or a deck of cards. Accordingly, the recited claim limitations are directed to information. Additionally, the printed indicia on each die are not functionally related to the substrate of the dice.”

Concurrence :

Judge Mayer agreed that the claims at issue are patent ineligible, and wrote separately to make two points. “First, subject matter eligibility under 35 U.S.C. § 101 is a pure question of law, one that can, and should, be resolved at the earliest stages of litigation. 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.”